DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 5, and 41
RIN 0651-AB32
Rules of Practice Before the
Board of Patent Appeals and Interferences
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Proposed rule.
SUMMARY: The Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office proposes
changes to the rules governing practice before the Board of Patent
Appeals and Interferences to consolidate and simplify such rules and to
reflect developments in case law, legislation, and administrative
practice.
DATES: Submit comments on or before January 26, 2004.
ADDRESSES: Submit comments:
1. By electronic mail to BPAI.Rules@uspto.gov
2. By mail to Mail Stop Interference, Director of the United States
Patent and Trademark Office, PO Box 1450, Alexandria, VA 22313-1450.
3. By facsimile to 703-308-7953.
See the SUPPLEMENTARY INFORMATION for further information about
submitting comments.
FOR FURTHER INFORMATION CONTACT:
Appeals: Jeffrey V. Nase or William F. Smith, 703-308-9797.
Otherwise: Richard Torczon, 703-308-9797.
SUPPLEMENTARY INFORMATION:
Relationship to Announced Rule Makings
This notice combines two rule makings previously announced in the
Unified Agenda as 0651-AB27 (Appeals) and 0651-AB32 (Interferences).
Filing Comments on This Proposed Rule
To the extent reasonably possible, the Office will make the
comments available at http://www.uspto.gov/web/offices/dcom/bpai/.
To facilitate this goal, the Office strongly encourages the submission of
comments electronically, in either ASCII format or ADOBE portable
document format (pdf). Regardless of which submission mode you select,
write only "Consolidated Board Rules" in the subject line to ensure
prompt consideration of your comments.
Since the comments will be made available to the public, the
comments should not include information that the submitter does not
wish to have published. Comments that include confidentiality notices
will not be entered into the record.
The Board of Patent Appeals and Interferences (Board) has
significantly overhauled its operations to address concerns about the
duration of proceedings before the Board. Improvements include an
increase in the number of administrative patent judges, outreach
programs to educate parties and examiners about Board operations, and
restructuring of Board procedures. This rule making proposes to revise
the rules governing Board proceedings to better reflect these new
procedures. Consistent with these improvements, the rules are also
consolidated and simplified to ease use. Finally, the rules address
case law and legislative changes that have occurred since the last
significant revision of the Board's rules.
Explanation of Proposed Changes
In keeping with long-standing patent practice, existing rules are
denominated "Rule x" in this supplementary information. The proposed
rules are denominated "proposed Sec. 41.x" to help readers
distinguish between existing and proposed rules.
Rules 1(a)(1)(iii), 5(e), 6(d)(9), 8(a)(2)(i)(B) and (a)(2)(i)(C),
and 11(e), and subpart E of part 1, would be removed to consolidate
interference information in proposed part 41, subparts D and E.
Rules 4(a)(2); 9(g); 36; 59(a)(1); 103(g); 112; 113(a); 114(d);
131(a)(1); 136(a)(1) and (a)(2); 181(a)(3); 248(c); 292(a) and (c);
295(b); 302(b); 303(c); 304(a)(1) and (a)(2); 322(a)(3); 323; 324;
565(e); 701(c)(2)(ii); 703(a)(4), (b)(3)(ii), (b)(4), (d)(2), and (e);
704(c)(9); and 993 would be revised to change cross-references to Board
proceedings.
Rule 14(e) would be revised to eliminate references to Board
actions. An analogous rule for Board actions is proposed in Sec.
41.6(a). The Office previously proposed a similar change to Rule 14(e).
See "Changes to Implement Electronic Maintenance of Official Patent
Application Records", 68 FR 14365 (25 March 2003), in which the
paragraph in question was numbered Rule 14(f). The Office received two
comments that were specific to then-proposed Rule 14(f). See
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/efw/aipla.pdf
and http://uspto.gov/web/offices/pac/dapp/opla/comments/efw/neifeld.pdf.
To avoid confusion with this proposed rule making, no
change was adopted to the language of the rule beyond renumbering it as
Rule 14(e). 68 FR 38611, 38612, 38620 (30 June 2003). In the present
proposal, the language of the rule has been simplified to avoid some of
the criticisms in one comment, but the suggestion in the comments to
relax the standards for publishing decisions is not being proposed.
Proposed Rule 14(e)(1) would continue to state that publicly available
materials are publicly available. Such materials may be published
without notification to or permission from the applicant or patent
owner.
Rules 17(b)-(d) and (h) would be revised to remove the Board fees,
which will be relocated to proposed Sec. 41.20.
Rule 48(a)-(c) and (i) would be revised, and Rule 48(j) added, to
consolidate the cross-reference correction of inventorship for
applications in contested cases before the Board.
Rules 55(a)(3) and (a)(4), and 136(b) would be revised to eliminate
the cross-references to Board rules.
Rule 116 would be amended to limit amendments after a final
rejection or other final action (Rule 113) in an application or in an
ex parte reexamination filed under Rule 510, or after an action closing
prosecution (Rule 949) in an inter partes reexamination filed under
Rule 913, to such amendments filed before or with any appeal to the
Board under proposed Sec. 41.31 or Sec. 41.61. Amendments after
appeal currently treated under Rule 116 would be moved to proposed
Secs. 41.33 and 41.63. Rule 116(d) would be amended to permit only
an amendment canceling claims, where such cancellation does not affect
the scope of any other pending claim in the proceeding, to be made in
an inter partes reexamination proceeding after the right of appeal
notice has issued under Rule 953, except as provided in Rule 981 or as
permitted by proposed Sec. 41.77(b)(1). Rule 116(e) would be added to
set forth a standard for treatment of an affidavit or other evidence
submitted after a final rejection or other final action (Rule 113) in
an application or in an ex parte reexamination filed under Rule 510, or
in an action closing prosecution (Rule 949) in an inter partes
reexamination filed under Rule 913, but before or with any appeal
(proposed Sec. 41.31 or proposed Sec. 41.61). The proposed standard
would be that such an affidavit or other evidence could be admitted
upon a showing of good and sufficient reasons why the affidavit or
other evidence is necessary and was not earlier presented. This standard
is currently in effect under Rule 195 for an affidavit or other evidence
submitted after appeal. Rule 116(f) would be added to prohibit affidavits
and other evidence in an inter partes reexamination proceeding after the
right of appeal notice under Rule 953, except as provided in Rule 981
or as permitted by proposed Sec. 41.77(b)(1).
Rule 191 would be amended to direct appellants under 35 U.S.C.
134(a) or (b) to proposed part 41, subpart B. Rules 192-196 would be
removed and reserved.
Rule 197 would be amended by changing its title to "Return of
Jurisdiction from the Board of Patent Appeals and Interferences;
termination of proceedings" to reflect the two remaining paragraphs of
this section. The subject matter of current paragraph (b) would be
moved to proposed Sec. 41.52 and the subject matter of current
paragraph (c) would be moved to proposed paragraph (b) of this section.
In addition, paragraph (a) would be amended to return of jurisdiction
of the involved application or patent under ex parte reexamination
proceeding to the examiner.
Rule 198 would be amended by changing its title to "Reopening
after a final decision of the Board of Patent Appeals and
Interferences" to better reflect the substance of the section and to
clarify that it applies when a decision by the Board of Patent Appeals
and Interferences on appeal has become final for judicial review.
Rule 324(a) and (c) would be revised, and Rule 324(d) added, to
consolidate cross-references to correction of inventorship for patents
in contested cases before the Board.
Rule 959 would be revised to direct inter partes reexamination
participants to proposed part 41, subpart C, for information about
appeals in such proceedings.
Rules 961-977 would be removed to consolidate inter partes
reexamination appeal information in proposed part 41, subpart C.
Rule 979 would be amended by changing its title to "Return of
Jurisdiction from the Board of Patent Appeals and Interferences;
termination of proceedings" to reflect the two paragraphs of this
section. Most of the subject matter of current paragraphs (a)-(g) would
be moved to proposed Secs. 41.79, 41.81 and 41.83. Paragraph (a)
would be amended to recite that jurisdiction over an inter partes
reexamination proceeding passes to the examiner after a decision by the
Board of Patent Appeals and Interferences upon transmittal of the file
to the examiner, subject to each appellant's right of appeal or other
review, for such further action as the condition of the inter partes
reexamination proceeding may require, to carry into effect the decision
of the Board of Patent Appeals and Interferences. Paragraph (b) would
be amended to state that upon termination of the appeal before the
Board of Patent Appeals and Interferences (proposed Sec. 41.83), if no
further appeal has been taken (Rule 983), the inter partes
reexamination proceeding will be terminated and the Director will issue
a certificate under Rule 997. If an appeal to the U.S. Court of Appeals
for the Federal Circuit has been filed, that appeal is considered
terminated when the mandate is received by the Office.
Rule 981 would be amended by changing its title to "Reopening
after a final decision of the Board of Patent Appeals and
Interferences" to better reflect the substance of the section and to
clarify that it applies when a decision by the Board of Patent Appeals
and Interferences on appeal has become final for judicial review.
Section 3 of part 5 provides that no interference will be declared
with an application under a national secrecy order. In part, this is
because the application cannot issue while the secrecy order is in
place so the completion requirement of proposed Sec. 41.102 is not
met. Cf. Case v. CPC Int'l, Inc., 730 F.2d 745, 750, 221 USPQ 196, 200
(Fed. Cir. 1984) (the Director declares an interference to determine
whether the application may issue). The proposed revision to Rule 5.3
would remove the reference to a patent because an interference may be
provoked with an application as well (proposed Sec. 41.202(a)(1)). The
proposed revision would also remove the requirement to place a notice
in the file of the targeted patent. Since the Office will not act on
the suggestion for an interference, the notice only serves to cast
unexamined doubt on the claims of the patentee without providing any
route of relief. An applicant intent on having an interference should
take steps to have the secrecy order lifted.
Section 23(c)(7) of part 10 would be amended to change the cross-
reference to the interference rules.
A new part 41 would permit consolidation of rules relating to Board
practice and to simplify reference to such practices. The Board would
continue the practice used in part 1 of this title of citing sections
without the part number. In proceedings before the Board, a party could
cite "Sec. 41.x" as "Board Rule x".
Proposed part 41 would better state the existing practice and
should not be read to change the existing practice except as explicitly
provided.
Proposed subpart A would state policies, practices, and definitions
common to all proceedings before the Board.
Proposed Sec. 41.1 would set forth general principles for proposed
part 41. Proposed Sec. 41.1(a) would define the scope of rules.
Proposed Sec. 41.1(b) would mandate that the Board's rules be
construed to achieve just, speedy, and inexpensive resolutions of all
Board proceedings, following the model of Rule 601 and Federal Rule of
Civil Procedure 1. Proposed Sec. 41.1(c) would explicitly extend the
requirement for decorum under Rule 3 to Board proceedings, including
dealings with opposing parties. Board officials are similarly expected
to treat parties with courtesy and decorum.
Proposed Sec. 41.2 would set forth definitions for Board
proceedings under proposed part 41. The preamble to proposed Sec. 41.2
is based on the preamble of Rule 601, which cautions that context may
give a defined word a different meaning. For instance, although
"final" would be defined for the purposes of identifying final agency
actions of the Board, it would not change the meaning of "final
rejection" in proposed Sec. 41.37(c)(1)(iv), which refers to an
action by an examiner.
The proposed definition of "Board" would cover three distinct
situations. First, for the purposes of a final agency action committed
to a panel of Board members, the definition would be identical in scope
to 35 U.S.C. 6(b). Second, the definition would include action by the
Chief Administrative Patent Judge in matters delegated in these
proposed rules to the Chief Administrative Patent Judge. Third, the
definition would recognize that non-final actions are often performed
by officials other than a panel or the Chief Administrative Patent
Judge. See Rule 610(a); cf. 37 CFR 2.127(c). This definition should not
be read to authorize a final decision on patentability, priority, or
United States Government ownership by anything other than a Board
panel. Other than instances in which a panel is required by statute,
the selection and authorization of an official to act on behalf of the
Board would be entirely a matter of internal administration.
The definition of "Board member" would follow the definition in
35 U.S.C. 6(a), under which the Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office, the Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the United States Patent
and Trademark Office, the Commissioner for
Patents, and the Commissioner for Trademarks are ex officio members of
the Board.
The phrase "contested case" would include patent interferences
(35 U.S.C. 135(a)) and proceedings with interference-based procedures
(42 U.S.C. 2182 and 2457(d)). The existence of a contested case is a
predicate for authorizing a subpoena under 35 U.S.C. 24. Although both
appeals in inter partes reexaminations under 35 U.S.C. 134(c) and some
petitions to the Chief Administrative Patent Judge, such as a petition
for access under 35 U.S.C. 135(c), may involve more than one party,
they are not considered contested cases for the purposes of proposed
part 41.
Finality is required for judicial review. Barton v. Adang, 162 F.3d
1140, 1143, 49 USPQ2d 1128, 1131 (Fed. Cir. 1998). The term "final"
would be defined pursuant to 5 U.S.C. 704 to assist parties in
determining when a Board action is ripe for judicial review. In Barton,
162 F.3d at 1143, 49 USPQ2d at 1131, the Court of Appeals for the
Federal Circuit held that an adverse judgment against a single party in
a multi-party patent interference was a final agency action with
respect to that party for the purposes of review under 35 U.S.C. 141.
The proposed definition of "final" would follow Barton in linking the
question of finality to whether an agency action on the merits is
operative against the party seeking judicial review. Under 35 U.S.C.
6(b), a decision on the merits in an appeal or a contested case by any
entity other than three Board members cannot be a final agency action.
Affirming or reversing disposes of an issue on appeal on the merits;
vacating or remanding does not. Entry of a new ground of rejection, by
definition, does not dispose of an issue on the merits. A petition
decision might not be final if, for instance, the decision is rendered
without prejudice to take some further action. An issue in a non-final
decision may usually be preserved for review in a final decision. See,
e.g., proposed Sec. 41.125(c)(5) under which a party may request
reconsideration by a panel.
The definition of "hearing" would reflect the holding of In re
Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 4 (Fed. Cir. 1985) that a
party is entitled to judicial consideration of properly raised issues,
but is not entitled to an oral argument or consideration of improperly
raised issues.
The definitions of "panel" and "panel proceeding" would reflect
the minimum quorum established in 35 U.S.C. 6(b), which reserves action
on patentability and priority to panels. 35 U.S.C. 6(b).
The term "party" would set forth a generic term for entities
acting in a Board proceeding.
The delegation of petition authority to the Chief Administrative
Patent Judge in proposed Sec. 41.3(a) would be new as a rule, but
follows a delegation already published in the Manual of Patent
Examining Procedure (MPEP) at Sec. 1002.02(f). This delegation by rule
would not prejudice the Director's prerogative to decide a petition or
to delegate authority to decide a petition to another subordinate. The
Chief Administrative Patent Judge could also delegate petition-deciding
authority to an official, provided the delegation is stated in writing.
Note that under proposed Sec. 41.3(b)(1) decisions committed by
statute to the Board would not be subject to petitions for supervisory
review. Such decisions would include merits decisions in appeals and
contested cases, and decisions on requests for rehearing. 35 U.S.C.
6(b). Review of such decisions would come through a request for
rehearing or through judicial review. Proposed Sec. 41.3(b)(2), which
would provide for petitions in contested cases to be decided by other
officials, would reflect the MPEP's designation of other actions
typical in the ordinary course of Board proceedings as "petitions".
See MPEP Sec. 1002.02(g) (various procedural decisions in
interferences). These actions would be considered routine motions or
requests.
Proposed Sec. 41.3(c) would reflect current practice in requiring
payment of a standard petition fee. Matters that would be excluded from
the scope of petitions in Sec. 41.3(a)(2) would not be petitions and
so would not require payment of a fee. Petitions seeking supervisory
review of a discretionary matter would also not require payment of a
petition fee. Compare Rule 181(a)(3) with Rules 182 and 183.
Proposed Sec. 41.3(d) would reflect the current practice of not
staying any action for a petition for supervisory review in Rule
181(f). Note that the Court of Appeals for the Federal Circuit has held
that a request for rehearing may toll the time for seeking judicial
review. In re Graves, 69 F.3d 1147, 1151, 36 USPQ2d 1697, 1700 (Fed.
Cir. 1995).
Proposed Sec. 41.3(e) would set times for filing petitions. As
with Rule 181(f), failure to file a timely petition would be sufficient
basis for dismissing or denying a motion.
Proposed Sec. 41.4(a) and (b) would follow the requirements of
Rules 136(b) and 645 in providing rules for extensions of time and for
acceptance of untimely papers. Congress has authorized patent term
adjustments for time spent in proceedings before the Board. 35 U.S.C.
154(b)(1)(C). Consequently, the Board must be mindful to avoid delays
in its administration of its proceedings, including delays requested or
caused by a party. The Board might set conditions on extensions to
minimize the effects of any delay, including restriction under 35
U.S.C. 121 of claims directed to subject matter not involved in the
Board proceeding. Proposed Sec. 41.4(c) would point parties to
timeliness rules that are related to Board proceedings, but not within
the scope of the Board rules.
Proposed Sec. 41.5 would set forth a limited delegation to the
Board under 35 U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel
in Board proceedings. It would generally be more efficient to have a
Board official familiar with the specific proceeding decide questions
of representation limited to the specific proceeding. Disqualification
would be a case-specific suspension or exclusion from practice within
the meaning of 35 U.S.C. 32. Under the terms of section 32, the
official conducting the disqualification hearing would have to be an
attorney.
Proposed Sec. 41.5(b) would delegate to the Board the authority to
conduct counsel disqualification proceedings while the Board has
jurisdiction over a proceeding. It also would clarify counsel
disqualification practice under Rule 613(c) by making explicit the fact
that a final decision to disqualify is an exercise of the powers of the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office under Sec. 32, not the
Board. The rule would delegate to the Chief Administrative Patent Judge
the authority to make final a decision to disqualify counsel in a
proceeding before the Board for the purposes of judicial review. This
delegation would not derogate from the Director the prerogative to make
such decisions, nor would it prevent the Chief Administrative Patent
Judge from further delegating authority to an administrative patent
judge, provided the delegation was stated in writing.
Proposed Sec. 41.6(a) would relocate into part 41 the portions of
Rule 14(e) that apply to the Board. Proposed Sec. 41.6(a)(1) would
continue to state that publicly available materials are publicly
available. Such materials may be published without notification to or
permission from the applicant. Proposed Sec. 41.6(a)(2) would set
forth the basis for making a determination under 35 U.S.C. 122(a) that
the publication of a Board action constitutes a special
circumstance. Parties should note that disagreement with a holding is
not an appropriate basis for challenging a special circumstance
determination. Moreover, a party not entitled to confidentiality under
section 122(a) would not have the standing to challenge publication
under this paragraph. For instance, an involved patentee could not
assert an opposing applicant's confidences as the basis for blocking a
publication.
Proposed Sec. 41.6(b) would generalize to all Board proceedings
the practice under Rule 11(e) of making the record of most interference
proceedings publicly available eventually, although that availability
might not occur until an involved patent application becomes available.
It also recognizes pre-grant publication as a basis for making a file
publicly available.
Proposed Sec. 41.7 would adopt the current practice of Rule 618
regarding duplicate papers and the expunging of papers, but would
generalize it to all Board proceedings. In recent decades, the typical
size of files has increased significantly. The increase imposes burdens
on the Office in managing the records and on users of the record. This
rule would provide a tool for managing the size and complexity of the
record and for preventing abuses that can occur in filing.
Proposed Sec. 41.8(a) would reflect the current practice under
Rules 192(c)(1) and 602 regarding disclosure of the real parties-in-
interest. Federal officials must meet high ethical standards. A
principal ethical concern is the avoidance of conflicts of interest for
the officials, including even the appearance of a conflict. See e.g.,
Stanek v. Dep't of Transp., 805 F.2d 1572, 1577 (Fed. Cir. 1986)
(affirming dismissal of employee for appearance of a conflict of
interest). In the case of the Board, a conflict would typically arise
when an official has an investment in a company with a direct interest
in a Board proceeding. Such conflicts could only be avoided if the
parties promptly provide the information necessary to identify
potential conflicts. The identity of a real party-in-interest might
also affect the credibility of evidence presented in a proceeding. For
instance, testimony from a source related to a real party-in-interest
may be seen as misleading or self-serving compared to evidence from a
completely independent source (e.g., Refac Int'l, Ltd. v. Lotus Dev.
Corp., 81 F.3d 1576, 1581-82, 38 USPQ2d 1665, 1669 (Fed. Cir. 1996)
(failure to identify declarants as former co-workers was inequitable
conduct)). Finally, in a contested case, the presence of a common real
party-in-interest might reflect a lack of genuine adversity between the
parties. Common ownership would ordinarily result in prompt termination
of any proceeding between the commonly owned parties. Barton, 162 F.3d
at 1143, 49 USPQ2d at 1131 (recognizing the practice while noting an
exception). See proposed Sec. 41.206.
The notice of judicial proceedings required in proposed Sec.
41.8(b) would be important because a judicial decision in another case
might be binding on the Board or a party. The Board might also use such
information to determine the best pacing for a Board proceeding. Notice
of other administrative proceedings might also be relevant. In the case
of other Office proceedings, particularly other Board proceedings,
notice might allow the Board to more efficiently allocate its limited
resources and to avoid inconsistent outcomes. In re Berg, 140 F.3d
1428, 1435 nn.7&8, 46 USPQ2d 1226, 1231 nn.7&8 (Fed. Cir. 1998)
(calling failure to identify a related application relevant to a
double-patenting analysis "misleading"). The "affect or be affected
by" standard in proposed Sec. 41.8(b) is derived from Federal Circuit
Rule 47.5(b). The proposed rule would also follow Rule 660(d) in
requiring notice to the Board of judicial review of the proceeding
itself. In the absence of such timely notice, the Board would usually
distribute records associated in the proceeding to other parts of the
Office for further action. Failure to provide a timely mandatory notice
under proposed Sec. 41.8 might result in sanctions including
disqualification of counsel and adverse judgment.
Proposed Sec. 41.9 would follow Rule 643 regarding action by an
assignee to the exclusion of an inventor, but would generalize it to
all Board proceedings. Orders permitting an assignee of a partial
interest to act to the exclusion of an inventor or co-assignee would
rarely be granted outside of contested cases. Even in contested cases,
such orders would typically issue only when the partial assignee was in
a proceeding against its co-assignee. Ex parte Hinkson, 1904 Comm'r.
Dec. 342.
Proposed Sec. 41.20 would consolidate the rules on fees associated
with Board practice. Rules 22, 23, and 25-28, which govern fee practice
before the Office generally, would continue to apply in Board
proceedings. Proposed paragraph (a) would set forth the petition fee,
while proposed paragraph (b) would set forth appeals-related fees.
Proposed subpart B would set forth rules for the ex parte appeal
under 35 U.S.C. 134 of a rejection in either a national application for
a patent, an application for reissue of a patent, or an ex parte
reexamination proceeding to the Board.
The preamble to proposed Sec. 41.30 would be based on a similar
provision in the preamble of Rule 601. The term "proceeding" would
set forth a generic term for a national application for a patent, an
application for reissue of a patent, and an ex parte reexamination
proceeding. The term "applicant" would set forth a generic term for
either the applicant in a national application for a patent or the
applicant in an application for reissue of a patent. The term "owner"
would set forth a shorthand reference to the owner of the patent
undergoing ex parte reexamination under Rule 510.
Proposed Sec. 41.31 would generally incorporate the requirements
of current Rule 191(a)-(d). Paragraph (a) would be subdivided into
three parts to improve readability. Paragraph (d) would be amended to
refer only to the time periods referred to in paragraphs (a)(1)-(a)(3)
of this section, while the current extension of time requirements for
Rules 192, 193, 194, 196 and 197, now provided in Rule 191(e), would be
relocated to proposed Secs. 41.37, 41.41, 41.47, 41.50 and 41.52.
Proposed Sec. 41.33(a) and (b) would replace the requirements of
current Rule 116 with a prohibition of amendments submitted after the
date the proceeding has been appealed pursuant to proposed Sec.
41.31(a)(1)-(a)(3), except amendments canceling claims or rewriting
dependent claims into independent form and as permitted by Secs.
41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1). A dependent claim is
rewritten into independent form by including all of the limitations of
the base claim and any intervening claims. Thus, no limitation of a
dependent claim can be excluded in rewriting that claim into
independent form. Proposed Sec. 41.33(c) would replace the
requirements of Rule 195 with a prohibition on the admission of
affidavits and other evidence submitted after the case has been
appealed pursuant to proposed Sec. 41.31(a)(1)-(a)(3), except as
permitted by proposed Secs. 41.39(b)(1), 41.50(a)(2)(i) and
41.50(b)(1). This would replace the current practice of permitting such
evidence based on a showing of good and sufficient reasons why such
evidence was not earlier presented. The Office believes that
prosecution of an application should occur before the examiner prior to
an appeal being filed, not after the case has been appealed pursuant to
proposed Sec. 41.31(a)(1)-(a)(3).
Proposed Sec. 41.35 would generally incorporate the requirements of
current Rule 191(e). In addition, the section is proposed to be amended to
make clear that jurisdiction over an application may be relinquished by the
Board and the application returned to the examining operation to permit
processing to be completed by the examining operation before the Board
takes up the appeal for decision. This is consistent with the present
practice of returning an appealed application to the examining
operation where some matter requiring attention has been identified
prior to assignment of the appeal number and docketing of the appeal.
In addition, it is proposed to permit the Board to take other
appropriate action to complete the proceeding. For example, if the
proceeding was not complete because one copy of the brief was missing,
the Board may contact the appellant to obtain the missing copy.
Proposed Sec. 41.37 would generally incorporate the requirements
of Rule 192. In addition, it is proposed to:
(1) Change the title of the section from "Appellant's brief" to
"Appeal brief".
(2) In paragraph (a), require one copy of the brief rather than
three copies consistent with the Office's move to an electronic file
wrapper.
(3) In paragraph (a), require the brief to be filed within two
months from the date of the notice of appeal under proposed Sec. 41.31
even if the time allowed for reply to the action from which the appeal
was taken is later, which overall simplifies docketing of the due date.
(4) In paragraph (c)(1)(i), require a statement in the brief
identifying by name the real party in interest even if the party named
in the caption of the brief is the real party in interest. This
amendment would provide appellant the necessary mechanism for complying
with proposed Sec. 41.8(a) in an appeal to the Board.
(5) In paragraph (c)(1)(ii), require identification of all other
prior and pending appeals, interferences or judicial proceedings known
to appellant, the appellant's legal representative, or assignee which
may be related to, directly affect or be directly affected by or have a
bearing on the Board's decision in the pending appeal, as well as to
set forth a mechanism for complying with proposed Sec. 41.8(b) in an
appeal to the Board.
(6) In paragraph (c)(1)(iii), require both a statement of the
status of all the claims in the proceeding (e.g., rejected, allowed or
confirmed, withdrawn, objected to, canceled) and an identification of
those claims that are being appealed.
(7) In paragraph (c)(1)(v), require a concise explanation of the
invention defined in each of the independent claims involved in the
appeal, which explanation shall refer to the specification by page and
line number, and to the drawings, if any, by reference characters. For
each claim involved in the appeal, it is proposed that every means plus
function and step plus function as permitted by 35 U.S.C. 112, sixth
paragraph, be identified and that the structure, material, or acts
described in the specification as corresponding to each claimed
function be set forth with reference to the specification by page and
line number, and to the drawing, if any, by reference characters. The
current requirement of Rule 192(c)(5) to set forth a concise
explanation of the invention defined in the claims involved in the
appeal by reference to the specification by page and line number, and
to the drawings, if any, by reference characters is not being followed
in a great number of briefs before the Board. It is expected that the
proposed requirements will be enforced by the examiner. Accordingly,
any brief filed by an appellant who is represented by a registered
practitioner that fails to set forth a summary which references the
specification by page and line number, and to the drawing, if any, by
reference characters or which fails to identify every means plus
function and step plus function as permitted by 35 U.S.C. 112, sixth
paragraph, would be in non-compliance with this section and would be
handled as set forth in proposed paragraph (d) of this section.
(8) In paragraph (c)(1)(vi), require a concise statement listing
each ground of rejection presented for review rather than issues for
review. An example of a concise statement is "Claims 1 to 10 stand
rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No.
X."
(9) Delete the current grouping of claims requirement set forth in
Rule 192(c)(7). The general purpose served by Rule 192(c)(7) is
addressed in proposed Sec. 41.37(c)(1)(viii). The existing grouping of
claims requirement has led to many problems such as (i) Grouping of
claims across multiple rejections (e.g., claims 1-9 rejected under 35
U.S.C. 102 over A while claims 10-15 are rejected under 35 U.S.C. 103
over A and the appellant states that claims 1-15 are grouped together);
(ii) Claims being grouped together but argued separately (e.g., claims
1-9 rejected under Sec. 102 over A, the appellant groups claims 1-9
together but then argues the patentability of claims 1 and 5
separately); and (iii) examiners disagreeing with the appellant's
grouping of claims.
(10) In paragraph (c)(1)(vii), require that any arguments or
authorities not included in the brief or a reply brief filed pursuant
to proposed Sec. 41.41 will be refused consideration by the Board,
unless good cause is shown (requirement currently found in Rule
192(a)), and to require a separate heading for each ground of rejection
in place of the previous Grouping of claims section of the brief. For
each ground of rejection applying to two or more claims, the claims may
be argued separately or as a group. It is proposed that, when an
appellant argues as a group multiple claims subject to the same ground
of rejection, the Board may select a single claim from that group of
claims and treat its disposition of a ground of rejection of that claim
as applying to the disposition of that ground of rejection of all
claims in the group of claims. Notwithstanding any other provision of
this paragraph, it is proposed to make explicit by rule that an
appellant's failure to argue separately claims that the appellant has
grouped together constitutes a waiver of any argument that the Board
must consider the patentability of any grouped claim separately. See In
re McDaniel, 293 F.3d 1379, 1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir.
2002) (interpreting Rule 192(c)(7) to require separate treatment of
separately rejected claims). It is further proposed that any claim
argued separately should be placed under a subheading identifying the
claim by number and that claims argued as a group should be placed
under a subheading identifying the claims by number. For example, if
Claims 1 to 5 stand rejected under 35 U.S.C. 102(b) as being
anticipated by U.S. Patent No. Y and appellant is only going to argue
the limitations of independent claim 1, and thereby group dependent
claims 2 to 5 to stand or fall with independent claim 1, then one
possible heading as required by this subsection could be Rejection
under 35 U.S.C. 102(b) over U.S. Patent No. Y and the optional
subheading would be Claims 1 to 5. As another example, where claims 1
to 3 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S.
Patent No. Z and the appellant wishes to argue separately the
patentability of each claim, a possible heading as required by this
subsection could be Rejection under 35 U.S.C. 102(b) over U.S. Patent
No. Z, and the optional subheadings would be Claim 1, Claim 2 and Claim
3. Under each subheading the appellant would present the argument for
patentability of that claim.
(11) In paragraph (c)(1)(vii), state that "Merely pointing out
differences in what the claims cover is not an argument as to why the
claims are separately patentable", a statement that in slightly different
form appears in Rule 192(c)(7).
(12) In paragraph (c)(1)(vii), eliminate subparagraphs (i) through
(v) of Rule 192(c)(8) which relate to the manner in which arguments are
to be made. Although they provide useful advice as to what an effective
argument ought to include, these provisions have often been ignored by
appellants and, for the most part, have not been enforced as set forth
in paragraph (d) of that rule.
(13) Add paragraph (c)(1)(ix) to require appellant to include an
evidence appendix of any evidence relied upon by appellant in the
appeal with a statement setting forth where that evidence was entered
in the record by the examiner so that the Board will be able to easily
reference such evidence during consideration of the appeal.
(14) Add paragraph (c)(1)(x) to require appellant to include a
related proceedings appendix containing copies of decisions rendered by
a court or the Board in any proceeding identified pursuant to paragraph
(c)(1)(ii) of this section so that the Board can take into
consideration such decisions.
(15) Add paragraph (c)(2) to exclude any new or non-admitted
amendment, affidavit or other evidence from being included in the
brief.
(16) Add paragraph (e) to provide notice that the periods set forth
in this section are extendable under the provisions of Rule 136 for
patent applications and Rule 550(c) for ex parte reexamination
proceedings. This provision currently appears in Rule 191(d), but would
be more useful if provided in this section.
Proposed Sec. 41.39 would generally incorporate requirements found
in Rule 193(a).
Proposed Sec. 41.39(a)(2) would permit a new ground of rejection
to be included in an examiner's answer eliminating the current
prohibition of new grounds of rejection in examiner's answers. Many
appellants are making new arguments for the first time in their appeal
brief (apparently stimulated by a former change to the appeal process
that inserted the prohibition on new grounds of rejection in the
examiner's answer). Because the current appeal rules only allow the
examiner to make a new ground by reopening prosecution, some examiners
have allowed cases to go forward to the Board without addressing the
new arguments. Thus, the proposed revision would improve the quality of
examiner's answers and reduce pendency by providing for the inclusion
of the new ground of rejection in an examiner's answer without having
to reopen prosecution. By permitting examiners to include a new ground
of rejection in an examiner's answer, newly presented arguments can now
be addressed by a new ground of rejection in the examiner's answer when
appropriate. Furthermore, if new arguments can now be addressed by the
examiner by incorporating a new ground of rejection in the examiner's
answer, the new arguments may be able to be addressed without reopening
prosecution and thereby decreasing pendency. Proposed paragraph (b) of
this rule would specify the options available to an appellant who has
received a new ground of rejection, including the option to request and
have prosecution reopened before the examiner.
The proposed change to permit new grounds of rejection in
examiner's answers would not be open-ended but is envisioned to be
rare, rather than a routine occurrence. The Office plans to issue
instructions that will be incorporated into the MPEP requiring that any
new ground of rejection made by an examiner in an answer must be
approved by a management official such as a Technology Center Director
and that any new ground of rejection made in an answer be prominently
identified as such. It is the further intent of the Office to provide
guidance to examiners that will also be incorporated into the MPEP as
to what circumstances, e.g., responding to a new argument or new
evidence submitted prior to appeal, would be appropriate for entry of a
new ground of rejection in an examiner's answer rather than the
reopening of prosecution. Where, for example, a new argument(s) or new
evidence cannot be addressed by the examiner based on the information
then of record, the examiner may need to reopen prosecution rather than
apply a new ground of rejection in an examiner's answer to address the
new argument(s) or new evidence. Paragraph (b) of Sec. 41.39 would
provide the appellant two options when a new ground of rejection in an
examiner's answer is made, including the option of having prosecution
reopened.
The following examples are set forth to provide guidance as to when
the Office may or may not consider a factual scenario suitable for
introducing new grounds of rejection in the examiner's answer. These
examples are not considered an exhaustive list of situations that meet
or do not meet the criteria for making a new ground of rejection in an
examiner's answer:
Example 1: A new ground of rejection based upon prior art may be
allowed if the examiner obviously failed to include a dependent
claim in a rejection. For example, in the final rejection, claims 1,
13 and 27 were rejected under 35 U.S.C. 102(b) as being anticipated
by U.S. Patent No. Y. Claim 27 depended from claim 22 which depended
from claim 13 which depended from independent claim 1. No rejection
of claim 22 was set forth in the final rejection; however, the
summary sheet of the final rejection indicated that claims 1, 13 and
27 were rejected. In this situation, the examiner would reject claim
22 under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Y
as a new ground of rejection in the answer.
Example 2: A new ground of rejection would not be allowed to
reject a previously allowed or objected to claim even if the new
ground of rejection would rely upon prior art already of record. In
this instance, rather than making a new ground of rejection in an
examiner's answer, if the basis for the new ground of rejection was
approved by a supervisory patent examiner as currently set forth in
MPEP 1208.02, the examiner would reopen prosecution.
Example 3: The proposed amendment is intended to continue to
permit the examiner to include new grounds of rejection where
appellant was advised that an amendment under Rule 116 would be
entered for appeal purposes. The proposed rule would eliminate Rule
193(a)(2), which states that the filing of an amendment under Rule
116 represents applicant's consent when so advised that any appeal
on that claim will proceed subject to any rejections set forth in an
action from which appeal was taken. Proposed Sec. 41.39(a)(2)
broadens the situations in which an examiner can make a new ground
of rejection to include circumstances currently covered by Rule
193(a)(2).
Paragraph (b) of Sec. 41.39 would set forth the responses an
appellant may make when an examiner's answer sets forth a new ground of
rejection. Appellant would be required within two months from the date
of the examiner's answer containing a new ground of rejection either:
(1) To request that prosecution be reopened by filing a reply under
Rule 111 with or without amendment or submission of affidavits (Rules
130, 131 or 132) or other evidence, which would result in prosecution
being reopened before the examiner, or
(2) To file a reply brief under Sec. 41.41, which would act as a
request that the appeal be maintained. Such a reply brief could not be
accompanied by any amendment, affidavit (Rules 130, 131, or 132) or
other evidence. If such a reply brief were accompanied by any amendment
or evidence, it would be treated as a request that prosecution be
reopened before the examiner under paragraph (b)(1) of this section.
Any reply brief would have to specify the error in each new ground of
rejection as set forth in Sec. 41.37(c)(1)(viii) and should
generally follow the other requirements of a brief set forth in Sec.
41.37(c).
If in response to the examiner's answer containing a new ground of
rejection, appellant decides to reopen prosecution of the application
before the examiner, the Office will treat the decision to reopen
prosecution also as a request to withdraw the appeal. If appellant
fails to exercise one of the two options within two months from the
date of the examiner's answer, the appeal will be dismissed (i.e.,
terminated) sua sponte.
Paragraph (c) of Sec. 41.39 is proposed to be added to provide
notice that the period set forth in proposed paragraph (b) of this
section is extendable under the provisions of Rule 136(b) for patent
applications and Rule 550(c) for ex parte reexamination proceedings.
This provision currently appears in Rule 191(d), but it would be more
useful if provided in this section.
Proposed Sec. 41.41 would generally incorporate requirements found
in Rule 193(b). In addition:
(1) Paragraph (a) would make explicit that a reply brief could not
include any new or non-admitted amendment, affidavit or other evidence.
(2) Paragraph (b) would be added to make clear that a reply brief
not in compliance with paragraph (a) would not be considered. The
examiner would notify the appellant in this event.
(3) Paragraph (c) would be added to provide notice that the period
set forth in this section would be extendable under the provisions of
Rule 136(b) for patent applications and Rule 550(c) for ex parte
reexamination proceedings. This provision currently appears in Rule
191(d), but would be more useful if provided in this section.
Proposed Sec. 41.43 is proposed to be added to permit the examiner
to furnish a supplemental examiner's answer to respond to any new issue
raised in the reply brief. This would dispense with the need for the
Board to remand the proceeding to the examiner to treat any new issue
raised in the reply brief. It is proposed that a supplemental
examiner's answer may not include a new ground of rejection. If a
supplemental examiner's answer is furnished by the examiner, it is
proposed to permit the appellant to file another reply brief under
proposed Sec. 41.41 within two months from the date of the
supplemental examiner's answer.
The current prohibition against a supplemental examiner's answer in
other than a remand situation would be removed to permit use of
supplemental examiner's answers where the examiner is responding only
to new issues raised in the reply brief. As a consequence, the
requirements pertaining to appellants when prosecution is reopened
under Rule 193(b)(2) would be removed.
Section 41.43(a)(1) as proposed would permit the examiner to
furnish a supplemental examiner's answer to respond to any new issue
raised in a reply brief. It should be noted that an indication of a
change in status of claims (e.g., that certain rejections have been
withdrawn as a result of a reply brief) is not a supplemental
examiner's answer and therefore would not give appellant the right to
file a reply brief. Such an indication of a change in status may be
made on form PTOL-90. The Office will develop examples to help the
examiner determine what would or would not be considered a new issue
warranting a supplemental examiner's answer. An appellant who disagrees
with an examiner's decision that a supplemental examiner's answer is
permitted under this proposed rule may petition for review of the
decision under Rule 181. Possible examples of new issues raised in a
reply brief include the following:
Example 1: The rejection is under 35 U.S.C. 103 over A in view
of B. The brief argues that element 4 of reference B cannot be
combined with reference A as it would destroy the function performed
by reference A. The reply brief argues that B is nonanalogous art
and therefore the two references cannot be combined.
Example 2: Same rejection as in Example 1. The brief argues only
that the pump means of claim 1 is not taught in the applied prior
art. The reply brief argues that the particular retaining means of
claim 1 is not taught in the applied prior art.
Paragraph (a)(1) of proposed Sec. 41.43 would also set forth the
ability of the examiner to withdraw the final rejection and reopen
prosecution as an alternative to the use of a supplemental examiner's
answer. The primary examiner's decision to withdraw the final rejection
and reopen prosecution to enter a new ground of rejection will require
approval from the supervisory patent examiner as currently set forth in
MPEP 1208.02.
Paragraph (b) of proposed Sec. 41.43 would permit appellant to
file a supplemental reply brief in response to a supplemental
examiner's answer within two months from the date of the supplemental
examiner's answer. That two-month time period may be extended under the
provisions of Rule 136(b) for patent applications and Rule 550(c) for
ex parte reexamination proceedings as set forth in proposed Sec.
41.43(c).
Proposed Sec. 41.47 would generally incorporate the requirements
of Rule 194. In addition:
(1) Paragraph (b) is proposed to be amended to require the separate
paper requesting the oral hearing to be captioned "REQUEST FOR ORAL
HEARING" and that such a request can be filed within two months from
the date of the examiner's answer or supplemental examiner's answer.
(2) Paragraph (d) is proposed to be added to set forth the
procedure for handling the request for oral hearing when an appellant
has complied with all the requirements of paragraph (b) of this
section. Since notice to the primary examiner is a matter internal to
the Office, it is proposed that the requirement for notice to the
primary examiner be removed from the rule. It is anticipated that the
primary examiner will be sent notice of the hearing time and date by
e-mail.
(3) Paragraph (e) is proposed to be added to specifically provide
that at the oral hearing (i) appellant may only rely on evidence that
has been previously considered by the primary examiner and present
argument that has been relied upon in the brief or reply brief; (ii)
the primary examiner may only rely on argument and evidence raised in
the answer or a supplemental answer; and (iii) that appellant opens and
concludes the argument (i.e., the order of the argument at the hearing
is: Appellant opens, then the primary examiner argues, then the
appellant concludes presuming that appellant has reserved some time for
a concluding argument).
(4) The substance of proposed paragraph (f) is found in Rule 194.
Exemplary situations where the Board may decide no hearing is necessary
include those where the Board has become convinced, prior to hearing,
that an application must be remanded for further consideration prior to
evaluating the merits of the appeal or that the examiner's position
cannot be sustained in any event.
(5) Paragraph (g) is proposed to be added to provide notice that
the periods set forth in this section are extendable under the
provisions of Rule 136(b) for patent applications and Rule 550(c) for
ex parte reexamination proceedings. This provision currently appears in
Rule 191(d), but would be more useful if provided in this section.
Proposed Sec. 41.50 would generally incorporate the requirements
of Rule 196. In addition:
(1) Paragraph (a)(1) would explicitly provide that the Board, in
its principal role under 35 U.S.C. 6(b) of reviewing adverse decisions
of examiners, may in its decision affirm or reverse the decision of the
examiner in whole or in part on the grounds and on the claims specified
by the examiner. The Board may also remand an application to the examiner.
(2) Paragraph (a)(2) would be added to require appellant to respond
to any supplemental examiner's answer issued in response to a remand
from the Board to the examiner for further consideration of a rejection
to avoid sua sponte dismissal of the appeal as to all claims under
appeal. It is proposed that appellant must exercise one of the
following two options to avoid such sua sponte dismissal of the appeal
as to all claims under appeal: (i) Request that prosecution be reopened
before the examiner by filing a reply under Rule 111 with or without
amendment or submission of affidavits (Rules 130, 131 or 132) or other
evidence, and (ii) request that the appeal be maintained by filing a
reply brief as provided in proposed Sec. 41.41. If such a reply brief
is accompanied by any amendment, affidavit or other evidence, it shall
be treated as a request that prosecution be reopened before the
examiner under proposed Sec. 41.50(a)(2)(i). Any request that
prosecution be reopened under this paragraph would be treated as a
request to withdraw the appeal.
A first example of a remand from the Board to the examiner for
further consideration of a rejection is a remand for the examiner to
provide additional explanation as to how a reference anticipates a
claim (i.e., asking the examiner to set forth a prima facie case of
anticipation). A second example of a remand from the Board to the
examiner for further consideration of a rejection is a remand for the
examiner to ascertain (i.e., set forth) the differences between the
claimed subject matter of the primary reference in an obviousness
rejection and then to state why the claimed subject matter as a whole
would have been obvious at the time the invention was made to a person
of ordinary skill in the art (i.e., asking the examiner to set forth a
prima facie case of obviousness).
A first example of a remand from the Board to the examiner that is
not for further consideration of a rejection is a remand for the
examiner to consider an Information Disclosure Statement. A second
example of a remand from the Board to the examiner that is not for
further consideration of a rejection is a remand for the examiner to
consider a reply brief.
(3) Paragraph (b)(2) would eliminate the provision relating to
requests that the application or patent under ex parte reexamination be
reheard, since that provision would be included in proposed Sec.
41.52(a).
(4) Paragraph (c) would provide that the opinion of the Board may
include an explicit statement how a claim on appeal could be amended to
overcome a specific rejection and that when the opinion of the Board
included such a statement, appellant would have the right to amend in
conformity therewith. Such an amendment in conformity with such
statement would overcome the specific rejection, but an examiner could
still reject a claim so-amended, provided that the rejection
constituted a new ground of rejection.
(5) Paragraph (d) would provide that appellant's failure to timely
respond to an order of the Board of Patent Appeals and Interferences
could result in the dismissal of the appeal.
(6) Paragraph (f) would be added to provide notice that the periods
set forth in this section are extendable under the provisions of Rule
136(b) for patent applications and Rule 550(c) for ex parte
reexamination proceedings. This provision currently appears in Rule
191(d), but it would appear to be more useful if provided in this
section.
Proposed Sec. 41.52 would generally incorporate the requirements
of Rule 197(b). In addition, paragraph (a) is proposed to be amended to
incorporate the matter being deleted from Rule 196(b)(2) relating to
the request that the application or patent under ex parte reexamination
be reheard. In addition, the rule as proposed would permit the Board to
simply deny a request for rehearing in appropriate cases rather than
rendering a new opinion and decision on the request for rehearing.
Paragraph (b) is proposed to be added to provide notice that the period
set forth in this section is extendable under the provisions of Rule
136(b) for patent applications and Rule 550(c) for ex parte
reexamination proceedings. This provision currently appears in Rule
191(d), but would be more useful if provided in this section.
Proposed Sec. 41.54 would generally incorporate the requirements
of Rule 197(a).
Proposed Sec. 41.56 provides that an appeal under this proposed
subpart is terminated by the dismissal of the appeal or when, after a
final Board action a notice of appeal under 35 U.S.C. 141 is filed, a
civil action under 35 U.S.C. 146 is commenced, or the time for seeking
judicial review (Rule 304) has expired. Termination of an appeal under
this proposed subpart is the cessation of the appeal proceeding before
the Board and is distinct and separate from the termination of
proceedings on an application (proposed Rule 197(b)) or the termination
of proceedings on an ex parte reexamination proceeding which is
concluded by the issuance of a certificate pursuant to Rule 570. A
dismissal of an appeal results in a termination of the appeal
proceeding before the Board. After dismissal of an appeal, an
application is returned to the examiner to determine the proper course
of action (e.g., possible allowance and issuance if there are allowed
claims; possible abandonment if there are no allowed claims) as set
forth in sections 1214 to 1215.04 of the MPEP. After dismissal of an
appeal, an ex parte reexamination proceeding is returned to the
examiner to issue the appropriate certificate pursuant to Rule 570.
Proposed subpart C provides rules for the inter partes appeal under
35 U.S.C. 315 of a rejection in an inter partes reexamination
proceeding to the Board. This proposed subpart does not apply to any
other Board proceeding and is strictly limited to appeals in inter
partes reexamination proceedings filed under 35 U.S.C. 311.
The preamble to proposed Sec. 41.60 is based on a similar
provision in the preamble of Rule 601. The term "proceeding" provides
a shorthand reference to an inter partes reexamination proceeding. The
term "owner" provides a shorthand reference to the owner of the
patent undergoing inter partes reexamination under Rule 915. The term
"requester" provides a generic term to describe each party other than
the owner who requested that the patent undergo inter partes
reexamination under Rule 915. The term "appellant" provides a generic
term for any party, whether the owner or a requester, filing a notice
of appeal or cross appeal under proposed Sec. 41.61. If more than one
party appeals or cross appeals, each appealing or cross appealing party
is an appellant with respect to the claims to which his or her appeal
or cross appeal is directed. The term "respondent" provides a generic
term for any requester responding under proposed Sec. 41.68 to the
appellant's brief of the owner, or the owner responding under proposed
Sec. 41.68 to the appellant's brief of any requester. No requester may
be a respondent to the appellant brief of any other requester. The
terms "appellant" and "respondent" are currently defined in Rule
962. The proposed definition of the term "filing" provides a generic
requirement that any document filed in the proceeding by any party must
include a certificate indicating service of the document to all other
parties to the proceeding as required by Rule 903.
Proposed Sec. 41.61 would generally incorporate the requirements
of current Rule 959 and the changes thereto proposed in "Changes To
Implement the 2002 Inter Partes Reexamination and Other Technical
Amendments to the Patent Statute", 68 FR 22343 (28 April 2003)
(RIN 0651-AB57).
Proposed Sec. 41.63(a) and (b) would replace the requirements of
current Rule 116 with a prohibition of amendments submitted after the
date the proceeding has been appealed pursuant to proposed Sec. 41.61,
except for amendments permitted by proposed Sec. 41.77(b)(1) and
amendments canceling claims where such cancellation does not affect the
scope of any other pending claim in the proceeding. Proposed Sec.
41.63(c) would replace the requirements of Rule 975 with a prohibition
on the admission of affidavits and other evidence submitted after the
case has been appealed pursuant to proposed Sec. 41.61 except as
permitted by proposed Sec. 41.77(b)(1). This would replace the current
practice of permitting such evidence based on a showing of good and
sufficient reasons why such evidence was not earlier presented. The
Office believes that prosecution of an application should occur before
the examiner prior to an appeal being filed, not after the case has
been appealed pursuant to proposed Sec. 41.61.
Proposed Sec. 41.64 would generally incorporate the requirements
of Rule 961, but would make clear that jurisdiction over a proceeding
may be relinquished and the proceeding returned to the examining
operation to permit processing to be completed before the Board takes
up the appeal for decision.
Proposed Sec. 41.66 would generally incorporate the requirements
of Rule 963.
Proposed Sec. 41.67 would generally incorporate the requirements
of Rule 965 and the changes thereto proposed in "Changes To Implement
the 2002 Inter Partes Reexamination and Other Technical Amendments to
the Patent Statute", 68 FR 22343 (28 April 2003) (RIN 0651-AB57). In
addition, it is proposed:
(1) In paragraph (a), to require one copy of the brief rather than
three copies consistent with the Office's move to an electronic file
wrapper.
(2) In paragraph (c)(1)(i), to require a statement in the brief
identifying by name the real party in interest even if the party named
in the caption of the brief is the real party in interest. This
provides appellant the necessary mechanism of complying with proposed
Sec. 41.8(a) in an appeal to the Board;
(3) In paragraph (c)(1)(ii), to require clear identification of all
other prior and pending appeals, interferences or judicial proceedings
known to appellant, the appellant's legal representative, or assignee
which may be related to, directly affect or be directly affected by or
have a bearing on the Board's decision in the pending appeal, as well
as to provide a mechanism of complying with proposed Sec. 41.8(b) in
an appeal to the Board.
(4) In paragraph (c)(1)(iii), to require both a statement of the
status of all the claims in the proceeding (e.g., rejected, allowed or
confirmed, withdrawn, objected to, canceled) and an identification of
those claims that are being appealed.
(5) In paragraph (c)(1)(v), to require a concise explanation of the
subject matter defined in each of the independent claims involved in
the appeal and which concise explanation shall refer to the
specification by page and line number, and to the drawings, if any, by
reference characters. For each claim involved in the appeal, it is
proposed that every means plus function and step plus function as
permitted by 35 U.S.C. 112, sixth paragraph, be identified and that the
structure, material, or acts described in the specification as
corresponding to each claimed function be set forth with reference to
the specification by page and line number, and to the drawing, if any,
by reference characters. Any brief filed by an appellant who is
represented by a registered practitioner that fails to provide a
summary of the claimed subject matter which references the
specification by page and line number, and to the drawing, if any, by
reference characters or which fails to identify every means plus
function and step plus function as permitted by 35 U.S.C. 112, sixth
paragraph, would be in non-compliance with this section and would be
handled as provided in proposed paragraph (d) of this section.
(6) In paragraph (c)(1)(vi), to require a concise statement listing
each issue presented for review. An example of a concise statement is
claims 1 to 10 stand rejected under 35 U.S.C. 102(b) as being
anticipated by U.S. Patent No. X.
(7) To delete the current grouping of claims requirement set forth
in Rule 965(c)(7). The general purpose served by Rule 965(c)(7) is
addressed in proposed Sec. 41.67(c)(1)(viii). The existing grouping of
claims requirement has led to many problems such as (i) Grouping of
claims across multiple rejections (e.g., claims 1-9 rejected under 35
U.S.C. 102 over A while claims 10-15 are rejected under 35 U.S.C. 103
over A and the appellant states that claims 1-15 are grouped together);
(ii) claims being grouped together but argued separately (e.g., claims
1-9 rejected under Sec. 102 over A, the appellant groups claims 1-9
together but then argues the patentability of claims 1 and 5
separately); and (iii) examiners disagreeing with the appellant's
grouping of claims.
(8) In paragraph (c)(1)(vii), to set forth that any arguments or
authorities not included in a brief permitted in this section or filed
pursuant to proposed Secs. 41.68 and 41.71 will be refused
consideration by the Board, unless good cause is shown, and to require
a separate heading for each ground of rejection in place of the
previous grouping of claims section of the brief. For each ground of
rejection applying to two or more claims, the claims may be argued
separately or as a group. When an appellant argues as a group multiple
claims subject to the same ground of rejection, the Board may select a
single claim from that group of claims and treat its disposition of a
ground of rejection of that claim as applying to the disposition of
that ground of rejection of all claims in the group of claims.
Notwithstanding any other provision of this paragraph, it is proposed
to make explicit by rule that an appellant's failure to argue
separately claims that appellant has grouped together would constitute
a waiver of any argument that the Board must consider the patentability
of any grouped claim separately. See In re McDaniel, 293 F.3d 1379,
1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 2002) (interpreting analogous
Rule 192(c)(7) to require separate treatment of separately rejected
claims). It is further proposed that any claim argued separately should
be placed under a subheading identifying the claim by number and that
claims argued as a group should be placed under a subheading
identifying the claims by number.
(9) In paragraph (c)(1)(vii), to state that "Merely pointing out
differences in what the claims cover is not an argument as to why the
claims are separately patentable." This statement in slightly
different form is in Rule 965(c)(7).
(10) In paragraph (c)(1)(vii), to eliminate subparagraphs (i)
through (v) of Rule 965(c)(8), which relate to the manner in which
arguments are to be made. Although providing useful advice as to what
an effective argument ought to include, these provisions have often
been ignored by appellants and, for the most part, have not been
enforced as provided in Rule 965(d).
(11) To add paragraph (c)(1)(ix) to require appellant to include an
evidence appendix of any evidence relied upon by appellant in the
appeal with a statement setting forth where that evidence was entered
in the record by the examiner so that the Board would be
able to reference such evidence easily during their consideration of
the appeal.
(12) To add paragraph (c)(1)(x) to require appellant to include a
related proceedings appendix containing copies of decisions rendered by
a court or the Board in any proceeding identified pursuant to proposed
Sec. 41.67(c)(1)(ii) so that the Board can take into consideration
such decisions.
(13) Add paragraph (c)(2) to exclude any new or non-admitted
amendment, affidavit or other evidence from being included in an
appellant's brief.
Proposed Sec. 41.68 would generally incorporate requirements found
in Rule 967 and the changes thereto proposed in "Changes To Implement
the 2002 Inter Partes Reexamination and Other Technical Amendments to
the Patent Statute", 68 FR 22343 (28 April 2003) (RIN 0651-AB57), and
changes similar to those proposed in Sec. 41.67. In addition, it is
proposed to add paragraph (b)(2) to exclude any new or non-admitted
amendment, affidavit or other evidence from being included in a
respondent's brief.
Proposed Sec. 41.69 would generally incorporate requirements found
in Rule 969.
Proposed Sec. 41.71 would generally incorporate requirements found
in Rule 971 and the changes thereto proposed in "Changes To Implement
the 2002 Inter Partes Reexamination and Other Technical Amendments to
the Patent Statute", 68 FR 22343 (April 28, 2003) (RIN 0651-AB57).
Proposed Sec. 41.73 would generally incorporate the requirements
of Rule 973. In addition:
(1) Paragraph (b) would require the separate paper requesting the
oral hearing to be captioned "REQUEST FOR ORAL HEARING" and that such
a request can be filed within two months from the date of the
examiner's answer.
(2) Paragraph (d) would be added to provide the procedure for
handling the request for oral hearing in which a party has complied
with all the requirements of paragraph (b) of this section. Since
notice to the primary examiner is a matter internal to the Office, it
is proposed that the requirement for notice to the primary examiner be
removed from the rule. It is anticipated that the primary examiner will
be sent notice of the hearing time and date by e-mail.
(3) Paragraph (e) would be added to specifically provide that at
the oral hearing (i) parties may only rely on evidence that has been
previously considered by the primary examiner and present argument that
has been relied upon in the briefs; (ii) the primary examiner may only
rely on argument and evidence relied upon in the answer; and (iii) that
the Board will determine the order of the arguments presented at the
oral hearing.
(4) The substance of proposed paragraph (f) is found in Rule 194.
Exemplary situations where the Board might decide no hearing is
necessary include those where the Board has become convinced, prior to
hearing, that the proceeding must be remanded for further consideration
prior to evaluating the merits of the appeal.
Proposed Sec. 41.77 would generally incorporate the requirements
of Rule 977 and the changes thereto proposed in "Changes To Implement
the 2002 Inter Partes Reexamination and Other Technical Amendments to
the Patent Statute", 68 FR 22343 (April 28, 2003) (RIN 0651-AB57).
Proposed Sec. 41.79 would generally incorporate the requirements
of current Rule 979 concerning rehearing before the Board. Paragraph
(b) is proposed to be amended to generally incorporate the requirements
of current Rule 979(d). Paragraph (c) is proposed to be amended to
generally incorporate the requirements of current Rule 979(b).
Paragraph (d) is proposed to be amended to generally incorporate the
requirements of current Rule 979(c). Paragraph (e) is proposed to be
amended to generally incorporate the requirements of current Rule
979(g).
Proposed Sec. 41.81 would generally incorporate the requirements
of current Rule 979(e) and the changes thereto proposed in "Changes To
Implement the 2002 Inter Partes Reexamination and Other Technical
Amendments to the Patent Statute", 68 FR 22343 (April 28 2003) (RIN
0651-AB57).
Proposed Sec. 41.83 would incorporate some of the requirements
found in current Rule 979(f) and would provide that an appeal by a
party under this proposed subpart is terminated by the dismissal of
that party's appeal, or when, after a final Board action, a notice of
appeal under 35 U.S.C. 141 is filed or the time for seeking judicial
review (Rule 983) has expired. Termination of an appeal by a party
under this proposed subpart is the cessation of that appeal proceeding
before the Board and is distinct and separate from the termination of
proceedings on an inter partes reexamination proceeding which is
concluded by the issuance of a certificate pursuant to Rule 997.
Proposed subpart D would provide rules for contested cases.
Contested cases are predominantly patent interferences under 35 U.S.C.
135(a), but also include United States Government ownership contests
under 42 U.S.C. 2182[3] and 2457(d). The proposed rules in this
proposed subpart would be more general than the existing rules for
three reasons. First, while three different statutory proceedings are
currently conducted under "interference rules", the rules are only
tailored to patent interferences. Second, the considerable detail of
the current rules has fostered a tendency toward technical compliance
with the rules rather than actually proving a case (e.g., Hillman v.
Shyamala, 55 USPQ2d 1220, 1221 (BPAI 2000)). Third, experience with the
current rules suggests that attempts to codify the procedures for
contested cases too precisely frustrates the policy of administering
interferences in a fast, inexpensive, and fair manner. Consequently,
the rules would be simplified to give parties adequate guidance about
the procedures while permitting the Board to design an approach
appropriate to each case. The proposed rules would also better describe
the practice for most interferences declared since October 1998. A more
complete understanding of existing practice as it relates to the
current rules can be obtained from reading the Interference Trial
Section's Standing Order, which can be found at
http://www.uspto.gov/web/offices/dcom/bpai/standing 2003May.pdf.
Proposed Sec. 41.100 would define two terms. The term "business
day" would be defined in a manner consistent with 35 U.S.C. 21(b) to
exclude Saturday, Sunday, and Federal holidays, when the closure of the
Board may affect the Board's, or a party's, ability to perform an
action.
The term "involved" appears in 35 U.S.C. 135(a) with respect to
claims and is implicitly defined in Rule 601(f) (for claims) and in
Rule 601(l) (for applications), but is not explicitly defined in the
current rules. The proposed rule would expressly define "involved" as
designating any patent application, patent, or claim that is the
subject of the contested case.
Proposed Sec. 41.101 would follow the practice in Rule 611(a) and
(b) for notifying parties of a contested case. As a courtesy, the Board
would make reasonable efforts to provide notice to all parties. Note
that failure to maintain a current correspondence address may result in
adverse consequences. Cf. Ray v. Lehman, 55 F.3d 606, 610, 34 USPQ2d
1786, 1788-89 (Fed. Cir. 1995) (finding notice of maintenance fee
provided to obsolete, but not updated, address of record to have been
adequate).
Proposed Sec. 41.102 would require completion of examination for
most applications (and of reexamination for most patents) before the
Board will institute a contested case. Contested
cases are generally much more expensive than ex parte proceedings.
Consequently, it makes little sense to initiate a contested case before
all patentability issues (other than those that are the subject of the
contested case) have been resolved. Brenner v. Manson, 383 U.S. 519,
528 n.12 (1966) (rejecting the proposition that an interference must be
declared when the applicant's interfering claims are unpatentable). The
main exceptions would be title contests under 42 U.S.C. 2182 and
2457(d), where control of the examination may itself be a
consideration.
Proposed Sec. 41.103 would follow the file jurisdiction practice
in Rules 614 and 615 except to generalize the temporary transfer of
jurisdiction to include parts of the Office other than the examining
corps, including, for example, the Office of Public Records. Such
transfers of jurisdiction will generally be for short periods and for
limited purposes.
Proposed Sec. 41.104(a) would follow the practice of Rule 610(e),
which permits an administrative patent judge wide latitude in
administering interferences. The waiver provision of proposed Sec.
41.104(b) would be modeled on Rule 183 and would balance the ideal of
precise rules for most proceedings against the need for flexibility to
achieve reasonably fast, inexpensive, and fair proceedings. The
decision to waive a procedural requirement would be committed to the
discretion of the administrative patent judge. This provision would
eliminate the need for repeatedly stating exceptions throughout
proposed subpart D. For instance, the current rules have many instances
where a time is set in a rule, but the rule also permits an
administrative patent judge to adjust the time. Proposed Sec.
41.104(c) would make clear that any default times set by rule may be
changed by order. "Times" in paragraph (c) would include both dates
and durations.
Proposed Sec. 41.105 would codify existing practice prohibiting ex
parte communications about a contested case with an official actually
conducting the proceeding. Initiation of an ex parte communication
might result in sanctions against the initiating party. The prohibition
would include communicating with any member of a panel acting in the
proceeding or seeking supervisory review in a proceeding without
including the opposing party in the communication. In general, it is
wisest to avoid substantive discussions of a pending contested case
with a Board official. The prohibition on ex parte communications would
not extend to (1) ministerial communications with support staff (for
instance, to arrange a conference call), (2) hearings in which opposing
counsel declines to participate, (3) informing the Board in one
proceeding of the existence or status of a related Board proceeding, or
(4) reference to a pending case in support of a general proposition
(for instance, citing a published opinion from a pending case or
referring to a pending case to illustrate a systemic problem).
Proposed Sec. 41.106 would provide guidance for the filing and
service of papers. Under proposed Sec. 41.106(a), papers to be filed
would be required to meet standards very similar to those required in
patent prosecution, Rule 52(a), and in filings in the Court of Appeals
for the Federal Circuit, Fed. R. App. P. 32. Proposed Sec.
41.106(a)(1) would permit a party to file papers in either A4 format or
8 1/2-inch x 11-inch format, but not to alternate between formats. See
Standing Order para. 3.3. At present, the Board prefers papers to be filed
in 8 1/2-inch x 11-inch format because the present filing system is
best adapted to this paper format. Electronic filing might eventually
render this preference moot.
Proposed Sec. 41.106(b) would provide guidance specific to papers
other than exhibits. Proposed Sec. 41.106(b)(1) would codify current
practices for the cover sheet of a paper. Standing Order para. 3.1, 3.5
and 3.6; cf. Fed. R. App. P. 32(a)(2). The caption aids in the prompt
matching of the paper to its file. The header expedites communications
between the Board staff and the party in the event that some prompt
action, such as the correction of a filing defect, is necessary. The
current practice of requiring a pink cover sheet aids in the processing
and filing of papers at the Board and facilitates use of the
administrative record by clearly indicating the beginning of each
paper.
Proposed Sec. 41.106(b)(2), which would require holes at the top
of the paper, would codify the practice under Standing Order para. 3.4,
which is based on Local Civil Rule 5.1(f) (1999) of the United States
District Court for the District of Columbia. The proposed rule would
facilitate entry of the paper in the administrative record.
The bar in proposed Sec. 41.106(b)(3) against incorporation by
reference and combination of papers would minimize the chance that an
argument will be overlooked and would eliminate abuses that arise from
incorporation and combination. In DeSilva v. DiLeonardi, 181 F.3d 865,
866-67 (7th Cir 1999), the court rejected "adoption by reference" as
"a self-help increase in the length of the * * * brief" and noted
that "incorporation is a pointless imposition on the court's time. A
brief must make all arguments accessible to the judges, rather than ask
them to play archaeologist with the record." The same rationale
applies to Board proceedings.
Proposed Sec. 41.106(b)(4) would provide rules for the citation of
authority. Parallel citation to a West Company reporter and to the
United States Patents Quarterly, particularly for patent decisions of
Federal courts, is the norm in patent law. See Federal Circuit Rule
28(e). Pinpoint citations, also called "jump citations", are the norm
in legal practice. See The Bluebook: A Uniform System of Citation Sec.
3.3(a) (Columbia L. Rev. Ass'n et al. 17th ed. 2000). The citation of
secondary authority would be discouraged whenever primary authority
exists. For instance, a citation to the MPEP is unhelpful if the MPEP
itself is merely summarizing binding case law.
Proposed Sec. 41.106(d) would provide additional guidance for
special modes of filing. Proposed Sec. 41.106(d)(1) would provide a
mailing address. Note that the proposed rule would encourage the use of
the EXPRESS MAIL service of the United States Postal Service. Mail
sent by other means would not be considered to have been filed until it
is actually received. Cf. proposed Sec. 41.106(e)(3), which would
permit service by methods at least as fast and reliable as EXPRESS
MAIL. Proposed Sec. 41.106(d)(2) would permit other modes of
filing. For instance, the Board is currently working on a pilot program
for electronic filing in contested cases. The diversity of possible
filing forms and the varying ability of parties to cope with electronic
filing requires a case-by-case determination of whether to place a
proceeding in the pilot program. Practitioners permitted to file
electronically are encouraged to agree to do so.
Proposed Sec. 41.106(e)(1) would require papers to be served when
they are filed if they have not already been served. Under current
practice, the usual instance in which filing before service is
authorized is the case of preliminary statements where prior filing is
a mechanism for ensuring that a party states its priority case based on
what it knows about its own proofs rather than on what it knows about
what the other party intends to prove. Proposed Sec. 41.106(e)(3)
would provide for expedited service, which would place the parties on
an equal footing by reducing the disparities that can arise from the
use of different forms of delivery.
Proposed Sec. 41.106(f) would provide rules for certificates of
service. Proposed Sec. 41.106(f)(1) would require the certificate to
be incorporated into each paper other than exhibits. The filing of
additional papers like certificates of service and transmittal letters
as separate papers places a file maintenance burden on the Board. The
filing of transmittal letters is strongly discouraged. Exhibits
constitute the exception to the rule since the current practice permits
the filing of most or all exhibits at one time. When the exhibits are
filed at the same time, the certificate may be incorporated into the
exhibit list. See proposed Sec. 41.154(d).
Section 41.107 of proposed subpart D would be reserved. It is
likely that rules for electronic filing and service will evolve in the
next few years. When they are ready for codification, Sec. 41.107
would be the natural place for them to appear.
Proposed Sec. 41.108 would require each party to identify its
counsel, if any. The proposed rule would also follow Rule 613(a), which
permits the Board to require the appointment of a lead counsel.
Proposed Sec. 41.109 would follow Rule 612 in permitting parties
to obtain copies of certain Office files directly related to the
contested case. Current practice is to make the necessary files
available for copying immediately after the Board initiates the
proceeding. Standing Order para. 6. After that initial opportunity passes,
files typically become less available because they are often required
in other parts of the Office. Proposed Sec. 41.109(c) would require a
party that has not received copies of a requested file to notify the
Board of the problem promptly. A delay in receiving a file resulting
from a failure to order a file promptly, or to notify the Board
promptly that a file has not been received, would not justify a delay
in the proceeding.
The proposed rule would depart from Rule 612 by eliminating the
requirement for withholding declarations under Rule 131 and statements
under Rule 608. One reason for withholding such papers is that they
give the opponent an advanced view of the applicant's priority case,
which is said to be unfair (and can enable fraud by the other party in
stating its priority case). This practice, however, is asymmetric
because the withholding only applies to applicants while a patentee's
Rule 131 declaration is publicly available. Moreover, to the extent the
applicant has relied on the declaration to obtain allowable claims, it
is an important element in the prosecution history. On balance, the
goals of examination are better served by permitting early access to
such statements. Nothing in the proposed rule would prevent the Board
from authorizing the withholding of such declarations on a showing of
good cause.
Proposed Sec. 41.110(a) would require a single clean set of the
claims, analogous to the requirement for amendments "in clean form"
in Rule 121. The annotated copy required in proposed Sec. 41.110(b)
would provide the opposing party and the Board with a clear
understanding of how the party construes its own claim. The clean and
annotated copies would provide everyone in the proceeding with a
convenient reference and help to identify mistakes, such as amendments
that were not entered or portions of the disclosure that were not
printed, before the proceeding begins in earnest. Cf. Southwest
Software, Inc. v. Harlequin, Inc., 226 F.3d 1280, 1296, 56 USPQ2d 1161,
1173 (Fed. Cir. 2000) (critical portion of disclosure missing).
Moreover, identically worded claims in separate applications claims
can, when properly construed in view of the specification, have
patentably distinct scopes. This possibility is particularly important
for claims written in the form permitted under 35 U.S.C. 112[6], where
identically worded means or steps might not correspond to equivalent
structures, materials, or acts in the respective disclosures. For
instance, a limitation requiring "means for fastening" might refer to
rivets in one specification and glue in another, which on the facts of
the case might not prove to be equivalent. Here is an example of the
annotation that would be required (except the bracketed portion should
also be shown in bold face): " . . . means for fastening {Fig. 6, item
3; also page 17, lines 9-22{time} . . . ."
Proposed Sec. 41.120 would provide for notice of requested relief
and the basis for that relief in contested cases. Similar notices are
already common in patent interferences, e.g., a preliminary statement,
a statement under Rule 608, and a motions list currently required at
the first status conference. These notices can be effective mechanisms
for administering cases efficiently and for placing opponents on
notice. Interferences suggested under proposed Sec. 41.202(a) would
already include a notice from at least one party, although the Board
could require more detail.
Proposed Sec. 41.120(b) would apply present Rule 629(e) regarding
the effect of preliminary statements to notices generally. Preliminary
statements are binding on the submitting party. The proposed rule would
make other such notices presumptively binding because compliance with
current notice practices is highly variable and can have the effect of
prejudicing the party that complies most completely with a notice
requirement. The filing party should not be allowed to hide behind an
ambiguous notice. For instance, a notice that alleges a date of
conception "no later than 20 June 2000" would be construed as
limiting the submitting party to proving a date no earlier than 20 June
2000. Note that a notice is not evidence except to the extent it
qualifies as a party-opponent admission. See Federal Rule of Evidence
801(d)(2). Proposed Sec. 41.120(c) would permit correction of a notice
after the time set for filing the notice, but would set a high
threshold for entry of the correction.
Proposed Sec. 41.121(a)(1) would redefine motions practice under
Rule 633(a), (b), (c)(2), (c)(3), (c)(4), (f) and (g) to focus more
specifically on the central issue in the contested case. Current
practice often permits motions that have little to do with the point of
the contest. For instance, a motion for unpatentability in an
interference is not helpful if it does not result in a loss of
standing, a change in the scope of the count, or a change in the
accorded benefit.
Proposed Sec. 41.121(a)(1)(iii) would permit a motion for judgment
in the contest, which can include an attack on standing as well as a
motion for relief on the central issue of the contest. For instance,
priority in interferences would be raised through motions. This
departure from current practice would address a potential disadvantage
to the senior party, which currently may have to make decisions about
the junior party's priority case after the junior party has provided
its evidence but before it explains the evidence. The prohibition on
motions directed to priority and derivation in Rule 633(a) would be
removed, although a decision on such motions would likely be contingent
on decisions regarding the scope of the interference. Consequently, the
Board might not authorize the filing of a priority or derivation motion
until after scope issues have been resolved.
Proposed Sec. 41.121(a)(2) and (a)(3) would modify the responsive
motion and miscellaneous motion practice under Rules 633(i) and (j),
634, and 635 to ensure that the proceeding remains focused. For
instance, current practice allows a motion to correct inventorship at
any time (Rule 634). Under the proposed rules, a motion to correct
inventorship could be an appropriate responsive motion in the face of a
patentability attack or in view of a priority statement, but would not
be permitted without some connection to an issue that must be resolved
in the contested case. The authorization requirement in proposed Sec.
41.121(a)(2) would also provide a mechanism for limiting abusive
practices, such as moving to add many more claims than are necessary to
cure a problem. Proposed Sec. 41.121(a)(3) would provide for
miscellaneous motions, which would offer a mechanism for requesting
relief on procedural issues and other issues tangential to
patentability and priority. See proposed Sec. 41.104. A miscellaneous
motion would not be considered a petition; hence, no petition fee is
required. See proposed Sec. 41.3(b). Panel review of a decision on a
miscellaneous motion would apply an abuse of discretion standard. See
proposed Sec. 41.125(c)(5); Rule 655(a).
Proposed Sec. 41.121(b) would place the burden of proof on the
moving party, following Rule 637(a). Since priority would be presented
as a motion, this paragraph would change the allocation of burden of
proof established in Rule 657(a). Cf. Brown v. Barbacid, 276 F.3d 1327,
1332, 61 USPQ2d 1236, 1239 (Fed. Cir. 2002) (construing Rule 657(a) to
require the ultimate burden of proof on priority to remain on the
junior party). A motion that fails to justify relief on its face could
be dismissed or denied without regard to subsequent briefing.
Proposed Sec. 41.121(c)(1) would follow Rule 637(a) regarding the
general contents of motions, but would also codify the current practice
of requiring a separate paper for each motion. The separate paper
requirement would reduce the chances that an argument will be
overlooked and would generally reduce the complexity of any given
paper. The numbered paragraphs stating material facts in proposed Sec.
41.121(c)(1)(ii) should be short, ideally just a sentence or two, to
permit the opposing party to admit or deny each fact readily. Under
proposed Sec. 41.121(c)(1)(iii), sloppy motion drafting would be held
against the moving party. A vague argument or citation to the record
creates inefficiencies for the Board and is fundamentally unfair to the
opposing party. Cf. Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340,
1351, 53 USPQ2d 1580, 1589 (Fed. Cir. 2000) (declining to scour the
record to make out an argument for a party).
Proposed Sec. 41.121(c)(2) would require the movant to make
showings ordinarily required for the requested relief in other parts of
the Office. Many actions, particularly corrective actions like changes
in inventorship, filing reissue applications, and seeking a retroactive
foreign filing license, are governed by other rules of the Office. By
requiring the same showings, the proposed rule would keep practice
uniform throughout the Office. The Board could temporarily release the
affected file to the part of the Office usually responsible for
administering the rule to ensure consistency or otherwise take
advantage of that entity's expertise. See proposed Sec. 41.103.
Proposed Sec. 41.121(d) would provide authority comparable to Rule
641, which allows an administrative patent judge to raise questions of
patentability. The proposed rule would be broader because it would
permit the Board to inquire into other issues that may arise, such as
whether there continues to be an interference-in-fact in view of a
claim construction reached in deciding a motion. In this regard, it
would be akin to an order to show cause under Rule 640(d)(1).
Proposed Sec. 41.122 would address the perennial problem of new
arguments or requests for relief creeping in at inappropriate times.
The proposed rule would largely adopt the present practice in Standing
Order para. 13.7, but would extend the practice to oppositions as well.
Note that a movant need not anticipate all possible bases for
opposition, but may be held accountable for positions apparently
inconsistent with those taken by the movant during prosecution of an
application. For instance, a motion to add a broad claim to an
application in which the claims have been narrowed to avoid prior art
should explain why the new claim is patentable, not only in terms of
written description in the specification but also in terms of the
previously applied prior art. The Board could expunge improper papers.
See proposed Sec. 41.7(a); Winter v. Fujita, 53 USPQ2d 1234, 1250
(BPAI 1999).
Proposed Sec. 41.123(a) would maintain the practice of having the
Board set the times for filing motions found in Rule 636, but would
eliminate the default times provided in that rule. Proposed Sec.
41.123(a)(1)-(3) would provide default times for filing an opposition,
a reply, and a responsive motion, but would not themselves authorize
the filing of an opposition, a reply, or a responsive motion.
Proposed Sec. 41.123(b) would provide requirements for
miscellaneous motions. A conference call would be required before the
motion is filed because most relief requested in such motions can be
granted (or denied) in a conference call. In other cases, the call
would permit the setting of a schedule to accommodate full briefing of
the issue. This telephone practice has greatly increased speed and
reduced costs associated with miscellaneous motion practice.
A party is not entitled to an oral argument. In re Bose Corp., 772
F.2d 866, 869, 227 USPQ 1, 4 (Fed. Cir. 1985). Hence, a party could
request an oral argument under proposed Sec. 41.124(a), but requests
would not be automatically granted. Factors considered in setting an
oral argument might include the usefulness of an oral argument to the
administrative patent judge or panel and the burden on an opponent of
attending an oral argument. A corollary is that not all requested
issues would necessarily be heard. Under proposed Sec. 41.124(b), the
parties would be required to file three working copies of the papers to
be considered for the panel if the hearing is set for a panel. This
requirement would be comparable to Rule 656(e) and Federal Circuit Rule
31(b).
Proposed Sec. 41.124(c) would provide a default time of 20 minutes
per party for oral arguments at the Board because they are not
evidentiary hearings. This default time would be comparable to the 15
minutes typically provided for oral argument at the Court of Appeals
for the Federal Circuit. Fed. Cir. R. 34, practice note (2001).
Proposed Sec. 41.124(d) would permit the use of demonstrative
exhibits. Visual aids requiring special equipment would be discouraged
since the argument time would be short and cumbersome exhibits would
tend to detract from the user's argument. The use of a compilation with
each demonstrative exhibit separately tabbed would be encouraged,
particularly when a court reporter is transcribing the oral argument
because the tabs provide a convenient way to record which exhibit is
being discussed. It is helpful to provide a copy of the compilation to
each member of the panel hearing the argument.
Proposed Sec. 41.124(e) would permit the transcription of the
argument. The transcription would become part of the record and could
be helpful to the panel in reaching its decision. See Okajima v.
Bourdeau, 261 F.3d 1350, 1356, 59 USPQ2d 1795, 1798 (Fed. Cir. 2001)
(noting the role of the transcript in the Board's decision). To be
helpful, however, the transcript would have to be filed promptly.
Proposed Sec. 41.125(a) would maintain the practice under Rule
640(b) of addressing issues in a manner that is both fair and
efficient. Noted with approval in Berman v. Housey, 291 F.3d 1345,
1352, 63 USPQ2d 1023, 1028 (Fed. Cir. 2002). A decision on a motion
might be logically contingent on the outcome of another motion even
though the motion is not expressly identified as a contingent motion.
Moreover, efficient allocation of Office resources might require
deferral of a motion or referral of a matter to another part of the
Office. Given the great cost of contested cases for both parties and
the Office, the Board will continue to focus on efficient
administration consistent with the requirements of due process.
Proposed Sec. 41.125(b) would clarify the current practice that a
decision short of judgment is not final. It would also codify the
current practice of having panel decisions bind further action during
the proceeding. The practice of having panel decisions bind further
proceedings has eliminated much of the uncertainty and added cost that
results from deferring any final decision until the end of the
proceeding. A party dissatisfied with an interlocutory decision on
motions should promptly seek rehearing rather than waiting for a final
judgment. A panel could, when the interests of justice require it,
reconsider its decision at any time in the proceeding prior to final
judgment. A belated request for rehearing would rarely be granted,
however, because its untimeliness would detract from the efficiencies
that have resulted from making interlocutory decisions binding.
Proposed Sec. 41.125(c) would adopt the time for requesting
rehearing from Rule 640(c) and the procedural requirements of the last
two sentences of Rule 655(a). Since 35 U.S.C. 6(b) requires a panel
decision for finality, a party should request rehearing by a panel to
preserve an issue for judicial review. A panel will apply the
deferential abuse-of-discretion standard to procedural decisions on
rehearing.
Proposed Sec. 41.126 would adopt the arbitration practice of Rule
690. Although parties may submit any issue to binding arbitration, the
Board might independently decide any questions of patentability. The
proposed rule would also clarify that the Board could independently
determine questions like whether an interference-in-fact exists or what
an Office rule means.
Proposed Sec. 41.127(a)(1) would adopt the estoppel provision of
Rule 658(c). Note that while the second sentence of the proposed
paragraph would continue to focus on the losing party, a decision of no
interference-in-fact could also estop a party from provoking an
interference with the same opponent for the same subject matter under
the first sentence. Cf. Rule 665, which cites Rule 658(c).
Proposed Sec. 41.127(a)(2) restates the final disposal provision
of Rule 663. Proposed Sec. 41.127(b) would restate the conditions in
Rule 662 under which the Board would infer a concession of the contest.
Proposed Sec. 41.127(c) would restate the recommendation provision of
Rule 659.
The Director has authority to prescribe a time for seeking judicial
review. 35 U.S.C. 142 and 146[1]. The prescribed time (2 months) is set
in Rule 304(a)(1), but can be extended on petition under Rule
304(a)(3). Proposed Sec. 41.127(d) would provide a time for requesting
a rehearing and would delegate to the Board limited discretion to toll
the time for seeking judicial review for the pendency of the request.
Tolling the time for seeking judicial review would codify the result of
In re Graves, 69 F.3d 1147, 1149-51, 36 USPQ2d 1697, 1698-1700 (Fed.
Cir. 1995), but such tolling would not be automatic. The Board would
not toll the time for seeking review where the request for rehearing
appears to be a delaying tactic, for example if a party files requests
serially.
Proposed Sec. 41.128 would define the term "termination", which
appears several times in 35 U.S.C. 135(c). Section 135(c) renders
settlement agreements and patents involved in or resulting from the
interference unenforceable if the parties fail to file the agreements
prior to termination. The Office is required to provide notice of the
requirement within a reasonable time before termination or else the
agreement may be filed up to sixty days after notice is provided. The
Office has generally tried to minimize the potential traps for the
unwary by construing the requirements liberally. Over time, this has
led to divergent constructions of "termination". In Hunter v.
Beissbarth, 15 USPQ2d 1343, 1344 n.1 (Comm'r Pat. 1990), the question
of when such agreements must be filed was liberally construed to extend
the time until after judicial review was complete. In contrast, the
question of what agreements are covered was limited to agreements
reached during proceedings before the Board in Johnston v. Beachy, 60
USPQ2d 1584, 1588 (BPAI 2001). A third construction is possible in
which the interference proceeding is tolled during the judicial
proceeding such that both Hunter and Johnston are correct. In the
proposed rule, the Director would construe section 135(c) to mean the
interference terminates when the time for seeking judicial review under
35 U.S.C. 142 and 146[1] expires, whether such review is sought or not.
This construction offers several practical benefits. First, by limiting
the number of agreements covered, the risk of inadvertent failure to
file is correspondingly limited. Second, although parties will have
less time to file than they would under the Hunter construction, the
outer bound for timely filing will be much closer to the date of all
affected agreements, thus reducing the likelihood of an accidental
failure to file. Finally, since the Director has authority to extend
the time for seeking judicial review, sections 142 and 146[1], the
proposed definition permits an additional route of relief when such
relief, though otherwise unavailable, would be in the interests of
justice.
Proposed Sec. 41.128(a) would codify the holding of In re Graves,
69 F.3d 1147, 1151, 36 USPQ2d 1697, 1699-1700 (Fed. Cir. 1995), that
whether the time for seeking judicial review has run or not, a timely
notice of appeal on an appealable decision terminates further Board
jurisdiction to act on the merits. Proposed Sec. 41.128(b) would
extend the same principal to the timely commencement of a district
court action under 35 U.S.C. 146 seeking review of an appealable
decision.
Proposed Sec. 41.129(a) would restate Rule 616 on sanctions, but
would expressly add the examples of misleading arguments and dilatory
tactics to the list of reasons for sanctions. A party always has a duty
of candor toward a tribunal. Hence, while the proposed rules no longer
expressly require a movant to show the patentability of a proposed
claim to the movant, the filing of a claim that the party knew or
should have known to be unpatentable would be inconsistent with that
duty of candor. The concern about dilatory tactics arises from the
potential for abuse inherent in patent term adjustments for time spent
in an interference provided in 35 U.S.C. 154(b)(1)(C).
Proposed Sec. 41.129(b) would restate the list of sanctions
provided in Rule 616, but would add terminal disclaimer as a sanction.
Terminal disclaimer would be an appropriate sanction in cases where a
party has caused needless delay. The sanction of expunging papers would
be consistent with proposed Sec. 41.7(a), under which unauthorized
papers may be expunged. Neither the list of sanctionable acts nor the
list of sanctions should be considered exhaustive.
Proposed Sec. 41.150(a) would restate the present policy of
limited discovery, consistent with the goal of providing contested
proceedings that are fast, inexpensive, and fair. Proposed Sec.
41.150(b) would provide for automatic discovery of materials cited in
the specification of an involved or benefit disclosure. The proposed
rule would place the parties on a level playing field since the party
that relied on the requested materials in its disclosure
would ordinarily have easier access to such materials than the
requester and would be in a better position to ensure that the
requested material is the material cited. It would also eliminate many
routine discovery requests and disputes. The requirement would not be a
requirement for a party to create materials or to provide materials not
cited. See Scott v. Gbur, 62 USPQ2d 1959 (BPAI 2002) (nonprecedential).
Any request under proposed Sec. 41.150(b) should come early in the
proceeding to ensure that the requesting party will have timely access
to such materials. Proposed Sec. 41.150(c) would restate existing
practice under Rule 687 regarding additional testimony.
Proposed Sec. 41.151 would continue the practice under Rule 671(i)
of making failure to comply with the rules a basis for challenging
admissibility.
Proposed Sec. 41.152 would continue the current practice of using
the Federal Rules of Evidence in contested cases. Experience since this
practice was implemented in 1984 has shown it to be beneficial without
being unduly restrictive for either the parties or the Board. Moreover,
the Federal Rules of Evidence embrace a well-developed body of case law
and are familiar to the courts charged with reviewing Board decisions
in contested cases. Minor changes to the rule have been made to conform
the rule with amendments to the Federal Rules of Evidence since 1984.
No special provisions for electronic records are proposed beyond
the provisions already in the Federal Rules of Evidence. See Fed. R.
Evid. 1001(3). While electronic records appear to be of special concern
because they often may be easily altered, the requirements already
present in the Federal Rules of Evidence adequately addressed this
concern. The Board's limited experience with electronic records in
interferences has not suggested any unique admissibility problems
requiring special provisions. Electronic records have been admissible
in interferences on the same basis as other records.
Proposed Sec. 41.153 would restate the practice under Rule 671(d)
of admitting Office records that are available to all parties without
certification. Cf. 28 U.S.C. 1744, which provides for the admissibility
of certified Office records. Note that under proposed Sec. 41.154(a),
each Office record cited as evidence would have to be submitted as an
exhibit, following the practice of Standing Order para. 14.5. In the case
of application files and similar files, only the specific record cited
should be submitted as an exhibit. Submitting the entire file when only
discrete portions are cited would create a record-management problem
for the Board and confusion about what the fact-finders must consider
in reaching a decision. The Board might expunge such filings sua
sponte.
Proposed Sec. 41.154(a) would restate Rule 671(a), which sets the
form of evidence, and would codify the existing practice that all
evidence must be submitted as an exhibit. Proposed Sec. 41.154(b)
would restate Rule 647 regarding translation of foreign language
evidence. Proposed Sec. 41.154(c) would set forth additional formal
requirements for exhibits consistent with current practice under
Standing Order para. 14.8.1. An exhibit list would be required under
proposed Sec. 41.154(d), following the current practice under Standing
Order para. 14.8.5.
Proposed Sec. 41.155 would set forth rules for objecting to
evidence and responding to objections. The current practice is to
provide a time for filing motions to exclude. Under proposed Sec.
41.155(b)(1), the default time for serving an objection to evidence
other than testimony would be five business days. Since evidence would
have to be served by EXPRESS MAIL or comparably fast means, see
proposed Sec. 41.106(e)(3), five business days would ordinarily be
adequate time to object.
Proposed Sec. 41.155(b)(2) would permit a party that submitted
evidence ten business days after service of the objection to cure any
defect in the evidence. (Standing Order para. 14.2 provides two weeks.
The Board would not ordinarily address an objection unless the objecting
party filed a motion to exclude under Sec. 41.155(c) because the
objection either might have been cured or might prove unimportant in
light of subsequent developments. Proposed Sec. 41.155(d) would
provide for a motion in limine for a ruling on admissibility, following
the practice of Standing Order para. 13.10.3.2.
Under 35 U.S.C. 23, the Director may establish rules for affidavit
and deposition testimony. Under 35 U.S.C. 24[1], a party in a contested
case may apply for a subpoena to compel testimony in the United States,
but only for testimony to be used in the contested case. Proposed Sec.
41.156(a) would require the party seeking a subpoena to first obtain
authorization from the Board; otherwise the compelled evidence would
not be used in the contested case. Proposed Sec. 41.156(b) would
impose additional requirements on a party seeking testimony or
production outside the United States because the use of foreign
testimony generally increases the cost and complexity of the proceeding
for both the parties and the Board. The Board would give weight to
foreign deposition testimony to the extent warranted in view of all the
circumstances, including the laws of the foreign country governing the
testimony. Little, if any, weight might be given to deposition
testimony taken in a foreign country unless the party taking the
testimony proved, as a matter of fact, that knowingly giving false
testimony in that country in connection with a Board proceeding is
punishable under the laws of that country and that the punishment in
that country for such false testimony is comparable to or greater than
the punishment for perjury committed in the United States. Proposed
Sec. 41.156(c) would advise that the Board may rely on official notice
and hearsay to determine the scope and effect of foreign law.
Proposed Sec. 41.157 would restate existing practice regarding the
taking of testimony. The time period for cross-examination set in
proposed Sec. 41.157(c)(2) would follow the current practice under
Standing Order para. 14.3 and would set a norm for the conference held
under proposed Sec. 41.157(c)(1). A party seeking to push the
deposition outside this period would have to be prepared to show good
cause. Proposed Sec. 41.157(c)(3) would clarify the practice of
providing documents in advance by limiting the practice to direct
testimony. Since direct testimony is generally in the form of a
declaration, the circumstance in which proposed Sec. 41.157(c)(3)
would apply should rarely occur apart from compelled testimony.
Proposed Sec. 41.157(d) would codify the existing requirement for
a conference before a deposition with an interpreter. Board experience
suggests that the complexity of foreign language depositions can be so
great that in many cases the resulting testimony is not very useful to
the fact-finder. To avoid a waste of resources in the production of an
unhelpful record, the Board must approve of the deposition format in
advance and may require that the testimony occur before the Board.
Occasionally other testimony that particularly touches on the
credibility of the witness, such as testimony about best mode,
derivation, or inequitable conduct, will also be required to be taken
before the Board so the Board may directly observe the demeanor of the
witness.
Proposed Sec. 41.157(e) would depart from the current rules in
adopting "officer", the term used in 35 U.S.C. 23, to refer to the
person qualified to administer testimony.
The certification of proposed Sec. 41.157(e)(6)(vi) would
substantially adopt the standard of Rule 674 for
disqualifying an officer from administering a deposition. The use of
financial interest as a disqualification, however, would be broader
than the employment interest currently barred. Payment for ordinary
services rendered in the ordinary course of administering the
deposition and preparing the transcript would not be a disqualifying
financial interest. An interest acknowledged by the parties on the
record without objection would not be a disqualifying interest.
Proposed Sec. 41.157(e)(7) would require the proponent of the
testimony to file the transcript of the testimony. If the original
proponent of the testimony declined to file the transcript (for
instance, because that party no longer intended to rely on the
testimony), but another party wished to rely on the testimony, that
party becomes the proponent and could file the transcript as its own
exhibit.
Proposed Sec. 41.157(f) would codify the existing practice of
requiring the proponent of testimony to pay the reasonable costs
associated with making the witness available for cross examination,
including the costs of the reporter and transcript.
Proposed Sec. 41.158 would codify the practice under Standing
Order para. 14.9 and 14.10 regarding expert testimony and scientific tests
and data. Opinions expressed without disclosing the underlying facts or
data may be given little, if any, weight. Rohm & Haas Co. v. Brotech
Corp., 127 F.3d 1089, 1092, 44 USPQ2d 1459, 1462 (Fed. Cir. 1997).
United States patent law is not an appropriate topic for expert
testimony before the Board.
Proposed subpart E would provide rules specific to patent
interferences. Proposed Sec. 41.200(a) would specifically identify
patent interferences as contested cases subject to the rules in
proposed subpart D.
Proposed Sec. 41.200(b) would continue the practice under Rule
633(a) of looking at the applicant's specification to determine the
meaning of a copied claim, not the specification from which the claim
was copied. See Rowe v. Dror, 112 F.3d 473, 479, 42 USPQ2d 1550, 1554
(Fed. Cir. 1997) (explaining the change in practice). Claims in
interferences are not to be treated any differently than any other
claim before the Office. In this regard, the proposed rule would also
clarify that claims are given their broadest reasonable interpretation
in light of the associated specification. In re Van Geuns, 988 F.2d
1181, 1185, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) (application claim in
interference); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989) (application claim after interference); In re Etter,
756 F.2d 852, 858-59, 225 USPQ 1, 5-6 (Fed. Cir. 1985) (en banc)
(patent claim in reexamination). The court in Etter noted that a
patentee in reexamination can amend its claim, while a patentee in
litigation ordinarily may not. A patentee in an interference can
contingently narrow its claim by filing a reissue application. 35
U.S.C. 251; Rule 633(h) and (i); proposed Sec. 41.121(a)(2). Indeed, a
patentee may face an estoppel if it does not seek to amend its claim
when necessary. Rule 658(c); proposed Sec. 41.127(a)(1).
Proposed Sec. 41.200(c) would set forth the policy now found in
Rule 610(c) setting two years as the maximum normal pendency for patent
interferences. New procedures adopted since October 1998 have permitted
the Board to meet or exceed this goal in most interferences declared
since that time. The cooperation of the parties has been a critical
factor in this success. The proposed rules would build on this success
by codifying procedures that have facilitated efficiency, removing
procedures that delayed proceedings, and creating new opportunities for
improvement.
Proposed Sec. 41.201 would set forth definitions specific to
patent interferences. The phrase "accorded benefit" would be defined
as an act by the Board with regard to priority. Specifically, it would
be the Board's recognition of an application as providing a proper
constructive reduction to practice for a party. This recognition would
create a presumption that is important for setting the burdens for
proving priority. "Accorded benefit" in this proposed subpart would
be a term of art limited to priority determinations under 35 U.S.C.
102(g). In this regard accorded benefit should be understood to be
distinct from benefit under 35 U.S.C. 119, 120, 121, or 365(a), which
impose additional requirements not directly relevant to a priority
determination under section 102(g).
A definition would be set forth for the phrase "constructive
reduction to practice" because this phrase would be used in the
proposed rules instead of "earliest effective filing date" to explain
more precisely how benefit would be accorded for the purpose of
determining priority. "Earliest effective filing date" has proved
confusing because the same term is used to discuss compliance with the
disclosure requirements of 35 U.S.C. 119, 120, 121, and 365. Compliance
with these statutes is important when considering most questions of
patentability, but the question of benefit for priority under 35 U.S.C.
102(g) is narrower than full compliance with the disclosure statutes.
Sections 119, 120, 121, and 365 focus on whether the full scope of a
claim is adequately disclosed, while an interference is focused on
whether at least one embodiment anticipates the interfering subject
matter as defined in a count.
The phrase "constructive reduction to practice" would focus
consideration on the value of a disclosure as a potentially
anticipating reference under section 102(g). Only a single enabled
embodiment is necessary for anticipation of the count. Note that
abandonment of an application without a co-pending (section 120 and
121) or timely filed (sections 119 and 365) successor application can
render an otherwise anticipating disclosure under section 102(g)
"inoperative for any purpose, save as evidence of conception." In re
Costello, 717 F.2d 1346, 1350, 219 USPQ 389, 391 (Fed. Cir. 1983). The
phrase "earliest constructive reduction to practice" would reflect
this requirement for continuity in the disclosure of the anticipating
embodiment under section 102(g).
The term "count" would be redefined to emphasize the relationship
of the count to admissible proofs of priority under section 102(g).
Eaton v. Evans, 204 F.3d 1094, 1097, 53 USPQ2d 1696, 1698 (Fed. Cir.
2000) (priority cannot be established with a reduction to practice
outside the count). There has been a theoretical debate in the
interference bar about whether a count is necessary. Opponents hold
that a count is an artificial construct that imposes significant
administrative costs. It is true that the use of a count is the
principal reason why interferences almost always proceed in two phases:
a first phase to examine issues related to the scope of the count and a
second phase to determine priority for the count. Moreover, use of a
count might in some cases obscure the relationship between the priority
proofs and the patentability of claims said to correspond to the count.
Proponents, however, note that addressing the separate unpatentability
of claims without the benefit of a count to focus the analysis also
imposes extensive costs and uncertainties.
While a count may be theoretically unnecessary, experience with the
current rules suggests that a count is desirable. The costs associated
with the count are outweighed by the advantages flowing from having a
single description of the interfering subject matter both for the
purpose of determining priority and, perhaps more importantly, for the
purpose of claim correspondence. The Federal Circuit recently reached a
similar conclusion regarding the use of a count in the context of
interfering patents in 35 U.S.C. 291 proceedings. Slip-Track Sys. v.
Metal-Lite, Inc., 304 F.3d 1256, 1264, 64 USPQ2d 1423, 1428 (Fed. Cir.
2002) (requiring the use of a count). Note that the requirement that
counts be separately patentable preserves the current practice of
having genus and species counts in appropriate cases, e.g., Hester v.
Allgeier, 687 F.2d 464, 215 USPQ 481 (CCPA 1982) because a generic
invention and a specific invention are often patentably distinct.
The definition of "involved claim" would be based on a similar
definition in Rule 601(f). This definition would be consistent with the
definition of "involved" for contested cases in proposed Sec. 41.100
because only claims that correspond to the count are at risk in an
interference, except to the extent a question is raised as to whether a
claim that does not correspond should.
The definition of "senior party" would depart from the current
definition in Rule 601(m) by focusing on the earliest constructive
reduction to practice to determine which party, if any, is senior.
Identification of the senior party is important because a presumption
of priority attaches to the senior party under proposed Sec.
41.207(a)(1).
The phrase "threshold issue" would be defined to include three
specific issues that affect the standing of a party to participate in
an interference. All three are of particular interest to the Board
because they have been subject to abuse by parties using interferences
as a type of opposition proceeding. An adverse decision on these issues
with respect to all of a party's claims would ordinarily end the
interference. The list would be open-ended and thus admit the
possibility that another issue might qualify as a threshold issue on
the particular facts of a specific case. Note that these threshold
issues would exist in addition to the possibility that a junior party
has failed to allege a prima facie sufficient case of priority. See
proposed Secs. 41.202(d) and 41.204(a).
The first identified threshold issue would be no interference-in-
fact. Without an interference-in-fact, there would be no reason to
place either party's claim in jeopardy in the context of an
interference proceeding.
The other two specifically identified issues, the bar under 35
U.S.C. 135(b) and lack of written description under 35 U.S.C. 112[1],
would be directed to the prevention of spuriously provoked
interferences and would consequently be limited to motions from a party
with a patent or published application against a party with an involved
application. Note that the section 135(b) bar and lack of written
description address complementary problems: Under section 135(b) a
claim may be supported but untimely, while a claim lacking written
description may be timely but is unsupported. For the purposes of the
proposed rule, provocation of an interference would be inferred from
the circumstances, such as entry of a claim after publication of the
movant's application or issuance of the movant's patent. It would not
require any determination that the opponent had an intent to provoke
the interference.
Proposed Sec. 41.202(a) would restate the requirements of Rules
604, 607, and 608 for applicants provoking an interference. A showing
of priority need not anticipate all possible bases for opposing the
showing. For instance, when the applicant's earliest constructive
reduction to practice of the interfering subject matter occurred before
the apparent earliest constructive reduction to practice of a targeted
patent, it would typically suffice for the applicant to show precisely
where its earliest constructive reduction to practice was disclosed.
Proposed Sec. 41.202(a)(5) would continue the practice under Rule
633(a) of looking at the applicant's specification to determine the
meaning of a copied claim, not the specification from which the claim
was copied. See Rowe v. Dror, 112 F.3d 473, 479, 42 USPQ2d 1550, 1554
(Fed. Cir. 1997) (explaining the change in practice). It would also set
forth a mechanism for weeding out frivolous attempts to provoke an
interference. A protester under Rule 291 hoping to prompt an examiner
to propose an interference could improve its chances of success by
satisfying the requirements of proposed Sec. 41.202(a)(1)-(a)(4) in
its protest.
Proposed Sec. 41.202(c) would restate the practice under Rule 605
of requiring an applicant to add a claim to provoke an interference.
This requirement is an effective and sometimes necessary method for
determining whether an interference actually exists between two
parties. In re Ogiue, 517 F.2d 1382, 1390, 186 USPQ 227, 235 (CCPA
1975). The requirement may be used to obtain a clearer definition of
the interfering subject matter or to establish whether the applicant
will pursue claims to the interfering subject matter. While an
applicant must add the claim or forfeit the subject matter of the
claim, the applicant may contest the requirement and the examiner may
withdraw the requirement. Where the requirement is based on a patent or
a published application, the examiner should note the patent or
application in making the requirement. In challenging the requirement,
the applicant may point to another claim in the application that
already claims the subject matter of the required claim. The applicant
may also propose an alternative claim with an explanation of why the
alternative claim would be better for the purpose of determining the
interference. A common reason for proposing an alternative claim is
that the applicant believes the required claim to be unpatentable at
least to the applicant.
Proposed Sec. 41.202(d) would set forth the basis for a summary
proceeding when an applicant does not appear to be able to show it
would prevail on priority. Proposed Sec. 41.202(d)(1) would restate
Rule 608, but would eliminate the distinction between Rule 608(a) and
Rule 608(b). The requirement could be made under 35 U.S.C. 132 even
when a rejection is not available. Failure to comply with the
requirement would result in abandonment of the application under 35
U.S.C. 133. Proposed Sec. 41.202(d)(2) would restate Rule 617 by
providing a basis for a summary proceeding on priority when the
applicant fails to make a sufficient showing of priority. To be
sufficient, under proposed Sec. 41.202(e), the showing would by
itself, if unrebutted, have to warrant a determination of priority.
Proposed Sec. 41.203(a) would state the standard for declaring a
patent interference. The Director uses a two-way unpatentability test
to determine whether claimed inventions interfere because, while a one-
way test is only sufficient for rejecting a claim under 35 U.S.C.
102(g), a two-way test is necessary to ensure that the claims of both
parties are directed to the same invention.
The case law provides that there is no interference-in-fact when
there is patentable distinctness between the claims of the parties
(e.g., Case v. CPC Int'l, Inc., 730 F.2d 745, 221 USPQ 196 (Fed.
Cir.1984); Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977); Nitz
v. Ehrenreich, 537 F.2d 539, 190 USPQ 413 (CCPA 1976)). Consequently,
to declare an interference, the Director requires patentable
indistinctness between the claimed subject matter of the parties. Eli
Lilly & Co. v. Bd. of Regents of Univ. of Washington, 334 F.3d 1264, 67
USPQ2d 1161 (Fed. Cir. 2003). In practice this means that a claim of A
and a claim of B interfere if the subject matter of A's claim would, if
treated as prior art, have anticipated or rendered obvious (alone or in
combination with prior art) the subject matter of B's claim, and vice
versa. This standard has recently come to be known as the "two-way"
test because it concisely summarizes the analysis. If this test is not
effectively satisfied there is no interference-in-fact, i.e., no
priority question to be resolved, although there may be other
applicable rejections.
Proposed Sec. 41.203(b) would specifically delegate this
discretion to an administrative patent judge. Proposed Sec. 41.203(c)
would similarly authorize an administrative patent judge to redeclare
the interference sua sponte or in response to a decision on motions. An
administrative patent judge could redeclare an interference sua sponte,
for instance, when another interfering patent or application came to
light. An interference is often redeclared after a motion is decided,
particularly when there are changes in the scope of the count, in the
order of the parties, or in the claims that would be affected by the
judgment as the result of the decision.
Proposed Sec. 41.203(d) would depart from current practice
regarding adding files or declaring additional interferences. Rules
633(d), (e), and (h) treat the addition of a party's application or
patent, or the declaration of an additional interference involving the
parties, as substantive motions, while Rule 642 treats the addition of
other patents or applications to the interference as an action more
akin to the original declaration. The proposed rule would eliminate
this difference in treatment and permit a suggestion, like an
applicant's request for an interference, to have an administrative
patent judge exercise discretion to declare a new interference or to
redeclare the existing interference to accommodate such files. The net
effect of these changes would be to unify the treatment and legal
effect of declaring and redeclaring interferences.
Proposed Sec. 41.204 would define notices of requested relief in
interferences. Proposed Sec. 41.204(a) would greatly simplify the
formal requirements for the principal notice on priority, the
preliminary statement (which is renamed a "priority statement"). It
would not specify the information that needs to be filed with a
priority statement. Instead, the rule would require each party to state
with particularity the facts on which it intends to rely. The
requirement for filing documentary support would reflect the current
practice under Rule 623(c) of filing first drawings and written
descriptions. The requirement would be limited to documents under the
control of a party because those documents are more susceptible to
alteration in light of subsequent developments in the interference.
Derivation would not be treated separately in the proposed rule since
it is a type of attack on priority.
Proposed Sec. 41.204(b) would codify the existing practice of
requiring a list of motions, but under the proposed rule a party would
ordinarily be limited to filing substantive motions consistent with its
notice of requested relief. No default times would be set for
statements in proposed Sec. 41.204(c) because the time for filing such
statements would be contingent on too many other variables to make
default times useful. Generally, such statements would be required
early in the interference because there would be very little discovery
permitted so most motions will be based on information under the
party's control. Subsequent developments in the proceeding, such as a
change in the count, might justify corrections to a statement.
Proposed Sec. 41.205 would restate practice under Rule 666
regarding the filing of settlement agreements and would implement the
requirements of 35 U.S.C. 135(c).
Proposed Sec. 41.206 would revise practice under Rule 602(a) to
use the "commonly owned" test discussed in Barton, 162 F.3d at 1144,
49 USPQ2d at 1132. Common ownership in a contested case is a concern
because it can lead to manipulation of the process. The proposed rule
would be stated permissively because not all cases of overlapping
ownership would be cause for concern. The cases of principal concern
involve a real party-in-interest with the ability to control the
conduct of more than one party.
Proposed Sec. 41.207(a)(1) would adopt the presumption regarding
order of invention from Rule 657(a). The presumption is based on the
date of the earliest constructive reduction to practice and permits a
different senior party for each count. Proposed Sec. 41.207(a)(2)
would adopt the evidentiary standards for proving priority stated in
Rule 657(b) and (c), but would restate the standard of Rule 657(c) in
terms of the date of the earliest constructive reduction to practice.
The proposed rule would also add publication under 35 U.S.C. 122(b) as
a reason for requiring proof of priority under a clear and convincing
evidence standard.
Proposed Sec. 41.207(b) would clarify claim correspondence
practice and explicitly state the effect of claim correspondence.
Proposed Sec. 41.207(b)(1) would reflect the practice under In re Van
Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993), for
grounds of unpatentability other than priority, under which
patentability must be determined for claims, not counts. The Board
could rely, however, on claim grouping that is explicit in the
arguments of the parties, see e.g., In re Roemer, 258 F.3d 1303, 1307,
59 USPQ2d 1527, 1529 (Fed. Cir. 2001) (noting party concession to have
claims stand or fall according to correspondence), or implicit from a
logical relationship of the claims (e.g., lack of written support for a
limitation in a claim might also affect its dependent claims).
Under proposed Sec. 41.207(b)(2), a claim would correspond to the
count if the subject matter of the claim would have been anticipated by
or obvious (alone or in combination with prior art) in view of the
subject matter of the count. The Director proposes to use a one-way
test for claim correspondence because correspondence is a provisional
rejection based on 35 U.S.C. 102(g). The count defines the scope of
admissible proofs for proving priority and thus, in theory, defines a
single inventive concept based on the claims of the parties. An adverse
determination of priority for the invention of the count would be the
basis for the rejection under section 102(g) or section 103.
The claims that correspond to the count are the "claims involved"
in the interference as that phrase is used in 35 U.S.C. 135(a). Claim
correspondence identifies the parties' claims that are at risk in the
event of an adverse judgment on priority such that they will be finally
refused (involved application claims) or cancelled (involved patent
claims) by virtue of the judgment as required under section 135(a). If
a party loses on priority with respect to the subject matter of a
count, the party would not be entitled to a claim that is anticipated
by (section 102(g)) or obvious in view of (section 103) the subject
matter of the lost count. Since correspondence is effectively a
provisional rejection under section 102(g), only a one-way test is
required to determine which claims would be at risk (e.g., In re
Saunders, 219 F.2d 455, 104 USPQ 394 (CCPA 1955) (generic claim
unpatentable in view of lost count to species)).
The current rules use both count-based and claim-based
correspondence. Compare Rules 603, 606, and 637(c)(2)(ii) (count based)
with Rules 637(c)(3)(ii) and (c)(4)(ii) (claim based). The principal
virtue of claim-based correspondence is that it clearly reflects the
implicit rejection of the corresponding claim based on 35 U.S.C.
102(g). A rejection based on Sec. 102(g) must look to the invention of
another. Ordinarily in proceedings before the Office, a determination of
the invention must be based on what is claimed. 35 U.S.C. 112[2]. A claim
is not a prerequisite for a rejection under section 102(g), however
(e.g., Apotex USA, Inc. v. Merck & Co., Inc., 254 F.3d 1031, 59 USPQ2d
1139 (Fed. Cir. 2001) (prior invention of another not based on a
claim)). It has long been the practice to determine priority in an
interference based on a count, which might not even be fully supported
by the disclosure of either party, Aelony v. Arni, although other
patentability determinations must be based on claims, In re Van Geuns,
988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The count is understood
be the common inventive concept of the parties.
Both claim-based and count-based correspondence rest on the
assumptions that the claim or count on which correspondence is based
defines a single inventive concept and that any obviousness
relationship between the proof of priority and a corresponding claim is
not too attenuated. Either of these problems can be addressed by filing
an appropriate motion regardless of the basis on which correspondence
is determined.
In cases where the count is closely based on actual claims and
where the number of claims is small, there is generally very little
practical difference between claim-based and count-based
correspondence. In cases involving very large numbers of claims,
however, claim-based correspondence places a huge burden on a party
seeking to have a claim designated as not corresponding because a
comparison must be made with every single corresponding claim. Count-
based correspondence would make analysis of claim correspondence easier
by providing a single point of reference - the count - for determining
correspondence. Moreover, by basing correspondence exclusively on the
count, the proposed rule would make the basis for claim correspondence
consistent with the basis for the priority determination.
The presumption in proposed Sec. 41.207(c) would restate the
presumption in Rule 637(a) that prior art cited against an opponent is
presumed to apply against the movant's claims. Note that the proposed
rule would clarify the current practice by not triggering the
presumption unless the motion is granted with respect to an opponent's
claim. Although the proposed rule would omit the reference to priority
statements, a party could not rely on its notice of requested relief as
evidence, see proposed Sec. 41.120(b), so the repetition in this
section would not be necessary.
The presumption of abandonment after one year in proposed Sec.
41.207(d) would be new. It is modeled after the one-year statutory bars
(e.g., 35 U.S.C. 102(b), 102(d), and 135(b)) and other incentives for
prompt filing (e.g., 35 U.S.C. 119(a) and 273(b)(1)). The presumption
is intended to encourage prompt filing of patent applications and to
help parties facing the issue by simplifying the analysis of an
apparent abandonment, suppression, or concealment. An invention, though
completed, is deemed abandoned, suppressed, or concealed if, within a
reasonable time after completion, no steps are taken to make the
invention publicly known. For example, failure to file a patent
application, to describe the invention in a publicly disseminated
document, or to use the invention publicly, has been held to constitute
abandonment, suppression, or concealment. Correge v. Murphy, 705 F.2d
1326, 1330, 217 USPQ 753, 756 (Fed. Cir. 1983). The case law does not
give definitive guidance on when abandonment, suppression, or
concealment has occurred. This uncertainty makes it harder to determine
what evidence to present in order to show an abandonment, suppression
or concealment; and to determine in close cases whether abandonment,
suppression, or concealment has occurred. Although this presumption is
designed to encourage prompt filing, it does not exclude rebuttal
proofs of continuing activity other than filing, such as those listed
in the Correge decision.
Proposed Sec. 41.208(a) would focus substantive motions on the
core questions of priority.
Proposed Sec. 41.208(b) would place the burden of proof on the
movant and would provide guidance on how to satisfy the burden of going
forward.
Proposed Sec. 41.208(c) would set forth some guidance to parties
about specific motions, but would not attempt to list all possible
substantive requirements for each motion, nor would it exhaustively
list all possible kinds of motions. In practice, interference practice
has proved too varied to permit an exhaustive list. The specific
requirements of the analogous Rule 637 have proved both over-inclusive,
see Chief Admin. Pat. J., "Interference Practice - Interference Rules
Which Require a Party to Show the Patentability of a Claim", 1217
Official Gaz. 17 (USPTO 1998) (limiting the scope of showings), and
under-inclusive, see Hillman v. Shyamala, 55 USPQ2d 1220, 1221 (BPAI
2000) (holding the required showings to be insufficient). Ultimately,
the movant would have to justify the relief sought substantively, which
means compliance with statutes, rules, and case law that could never be
fully replicated in a rule governing the content of motions.
Substantive motions in an interference essentially ask three
questions. First, should the proceeding reach the question of priority
at all? Second, what is the scope of the proofs necessary and proper
for proving priority and what claims must be cancelled in the event of
an adverse judgment? Third, which party will lose the determination of
priority? While final judgment is possible on a wide array of issues,
the fundamental purpose of an interference is to determine priority.
Consequently, substantive motions without some nexus to an ultimate
question of priority would not ordinarily be considered. For example, a
motion that a claim is unpatentable might be dismissed if it does not
affect a party's standing, the scope of the count, or the accorded
benefit.
The first question implicates the three "threshold issues" that
are ordinarily taken up early because they affect a party's standing in
an interference. Berman v. Housey, 291 F.3d 1345, 1352, 63 USPQ2d 1023,
1028 (Fed. Cir. 2002) (endorsing the Board practice of early
determination of threshold issues). These threshold issues are no
interference-in-fact, repose under 35 U.S.C. 135(b), and lack of
written description supporting claims added to provoke an interference.
Threshold issues present a movant with an opportunity to escape the
burdens of a full-scale interference. A party that failed to request
such relief early would not ordinarily receive an early determination.
The practice of deciding threshold issues early evolved to address
abuses on the part of some applicants provoking interferences.
An attack on standing must necessarily be effective with respect to
all of an opponent's claims on which the determination of interference-
in-fact depends; otherwise, it would really be some other type of
motion, such as a motion to change the count, claim correspondence, or
accorded benefit. Occasionally, more than one threshold issue might
need to be raised (in separate motions) to address all involved claims.
For instance, an opponent's copied claims might lack written
description, while its other corresponding claims would not in fact
interfere. Issues other than threshold issues could also affect
standing, but would rarely be taken up early because they have less
connection with the threshold determination of whether the Director is
of the opinion that an interference exists.
Proposed Sec. 41.208(c)(1) would set forth guidance on filing a
motion for judgment of no interference-in-fact. The proposed rule would
require a showing that the test for an interference under proposed
Sec. 41.203(a) is not met. The showing must be for all claims because
a single claim of each party is sufficient to support the Director's
opinion that an interference exists in fact.
Proposed Sec. 41.208(c)(2) would set forth guidance on filing a
motion for judgment that a patentee is entitled to repose under 35
U.S.C. 135(b). Section 135(b) has two aspects. It is a statute of
repose, Berman v. Housey, 291 F.3d 1345, 1351, 63 USPQ2d 1023, 1027
(Fed. Cir. 2002), and a statutory bar, In re McGrew, 120 F.3d 1236,
1238-39, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997). As a statute of repose,
it presents a threshold issue; otherwise, it is simply an attack on
patentability. To be a threshold issue, the motion must satisfy two
conditions. First, the party moving for repose must be the patentee or
published applicant entitled to repose under the statute. Second, it
must apply (possibly in combination with other threshold issues) to all
of an opponent's involved claims; otherwise, the interference would
continue whether the motion is granted or not. If either condition is
not met, the motion would be treated as a motion for unpatentability,
but not as a threshold issue.
Proposed Sec. 41.208(c)(3) would set forth general guidance for
attacking patentability. This guidance would apply to a non-threshold
motion alleging unpatentability under 35 U.S.C. 135(b) in view of non-
party's patent or published application. A motion attacking
patentability could be a threshold issue (e.g., an attack on the
written description of a copied claim), an effort to change the count
(by showing that claims within the scope of the count are not
patentable over prior art), or a priority issue, depending on the
claims attacked and the basis for the attack. Note that because counts
would continue to be used, the Board would continue the practice of
ordinarily either not authorizing the filing of, or deferring any
decision on, a patentability motion that raises questions of priority
or derivation during the first part of the interference. Generally
motions attacking patentability under 35 U.S.C. 102(a), 102(e), 102(f),
or 102(g) will be deferred, in whole or in part. This practice does
not, however, relieve a party of its obligation to state these grounds
as bases for relief when required.
The second set of substantive questions would involve changes to
the scope of the count, claim correspondence, and accorded benefit.
Motions under proposed Sec. 41.208(c)(3) attacking the patentability
of claimed subject matter within the scope of the count might also fall
within this category if they have the effect of narrowing the count.
Proposed Sec. 41.208(c)(4) would set forth guidance for some
common motions to change the count. If the count changes, no change in
accorded benefit will be presumed; it would have to be established in a
contingent motion to change benefit. Proposed Sec. 41.208(c)(4)(i)
would restate the requirement of Rule 637(c)(1)(v) to show that counts
are separately patentable. Proposed Sec. 41.208(c)(4)(ii)(C) would
codify the practice in Louis v. Okada, 59 USPQ2d 1073, 1076 (BPAI
2001), which required a movant seeking to broaden a count to cover its
best proof of priority to proffer that proof so the Board could
evaluate the merits of the motion.
Proposed Sec. 41.208(c)(5) would set forth guidance for parties
moving to change claim correspondence. Proposed Sec. 41.208(c)(5)(i)
would require that any added claim be patentable and correspond to the
count. A motion to add a claim that did not correspond to the count
would in effect be a request for an advisory action, which the Board
would not ordinarily give. A patentee could not use a reissue
application to circumvent this requirement that all claims in an
interference must correspond to the count. Winter v. Fujita, 53 USPQ2d
1234, 1249 (BPAI 1999). The proposed rule could be used to compel an
opponent to add a claim to its involved application or patent. Note
that patentee cannot be literally compelled to file a reissue
application for any reason, including to add a claim. Green v. Rich
Iron Co., 944 F.2d 852, 854, 20 USPQ2d 1075, 1076-77 (Fed. Cir. 1991).
The consequence of an opponent's refusal to add a claim, however, may
be a concession of priority with respect to the subject matter that the
patentee refuses to add. See Rule 605(a); cf. In re Ogiue, 517 F.2d at
1390, 186 USPQ at 235 (an applicant surrenders the subject matter of a
claim it refuses to copy); proposed Sec. 41.202(c). The remainder of
proposed Sec. 41.208(c)(5) would restate the correspondence test in
terms of a one-way test for patentability in which the subject matter
of the count is used as the primary reference.
Proposed Sec. 41.208(c)(6) would restate the test for according
benefit of an application in terms of recognition for a constructive
reduction to practice. In doing so, the test would avoid confusion with
the related, but distinct, tests for benefit of a disclosure for the
purposes of 35 U.S.C. 119, 120, 121, and 365. Note that a constructive
reduction to practice relates to the count, not a claim. Moreover, the
showing for a constructive reduction to practice would generally be
narrower because only a single embodiment is necessary to anticipate a
count. By contrast, Sec. 120 incorporates the requirements of 35
U.S.C. 112[1], which include disclosure of sufficient embodiments to
support the full scope of a claim. See Cromlish v. D.Y., 57 USPQ2d 1318
(BPAI 2000) (discussing this difference).
Proposed Sec. 41.208(c)(7) would permit the Board to require
additional showings. For example if a party had copied a claim and
during the interference proposed to argue that its opponent's claim was
indefinite under 35 U.S.C. 112[2], the Board could require the movant
to explain why its copied claim was not also indefinite.
Proposed Sec. 41.208(d) would require the use of claim charts
whenever a claim is being compared to something else. Claim charts are
often the most effective way to present the comparison convincingly.
Claim charts would not, however, be a substitute for argument since the
comparison would generally require additional explanation. The proposed
rule would refer to a "paper" rather than a "motion" because such
comparisons can arise in oppositions and even replies.
Regulatory Flexibility Act
The Deputy General Counsel for General Law of the United States
Patent and Trademark Office has certified to the Chief Counsel for
Advocacy of the Small Business Administration under the provisions of
section 605(b) of the Regulatory Flexibility Act that this proposed
rule making will not have a significant economic impact on a
substantial number of small entities.
Executive Order 13132
This rule making does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rule making has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This proposed rule involves information collection requirements
which are subject to review by the Office of Management and Budget
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.).
Currently approved forms include PTO/SB/31 (Notice of appeal) and
PTO/SB/32 (Request for hearing), both of which were cleared under the
OMB 0651-0031 collection, which will expire at the end of July 2006.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Biologics, Courts, Freedom
of information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
37 CFR Part 5
Classified information, Exports, Foreign relations, Inventions and
patents.
37 CFR Part 41
Administrative practice and procedure, Inventions and patents,
Lawyers.
For the reasons stated in the preamble, the Under Secretary of
Commerce for Intellectual Property and Director of the United States
Patent and Trademark Office proposes to amend 37 CFR chapter I as
follows:
PART 1 - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for Part 1 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
Sec. 1.1 [Amended]
2. Remove and reserve Sec. 1.1(a)(1)(iii).
3. In Sec. 1.4, revise paragraph (a)(2) to read as follows:
Sec. 1.4 Nature of correspondence and signature requirements.
(a) * * *
(2) Correspondence in and relating to a particular application or
other proceeding in the Office. See particularly the rules relating to
the filing, processing, or other proceedings of national applications
in subpart B, Secs. 1.31 to 1.378; of international applications
in subpart C, Secs. 1.401 to 1.499; of ex parte reexaminations of
patents in subpart D, Secs. 1.501 to 1.570; of extension of patent
term in subpart F, Secs. 1.710 to 1.785; of inter partes
reexaminations of patents in subpart H, Secs. 1.902 to 1.997; and
of the Board of Patent Appeals and Interferences in part 41 of this
title.
* * * * *
Sec. 1.5 [Amended]
4. Remove and reserve Sec. 1.5(e).
Sec. 1.6 [Amended]
5. Remove and reserve Sec. 1.6(d)(9).
Sec. 1.8 [Amended]
6. Remove and reserve Sec. 1.8(a)(2)(i)(B) and (a)(2)(i)(C).
7. In Sec. 1.9, revise paragraph (g) to read as follows:
Sec. 1.9 Definitions.
* * * * *
(g) For definitions in Board of Patent Appeals and Interferences
proceedings, see part 41 of this title.
* * * * *
8. In Sec. 1.14, revise paragraph (e) to read as follows:
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(e) Decisions on petition. (1) Any decision on petition is
available for public inspection without applicant's or patent owner's
permission if rendered in a file open to the public pursuant to Sec.
1.11 or in an application that has been published in accordance with
Secs. 1.211 through 1.221. The Office may independently publish
any decision that is available for public inspection.
(2) Any decision on petition not publishable under paragraph (e)(1)
of this section may be published or made available for public
inspection if the Director believes that special circumstances warrant
publication and the applicant does not, within two months after being
notified of the intention to make the decision public, object in
writing on the ground that the decision discloses a trade secret or
other confidential information and states that such information is not
otherwise publicly available. If a decision discloses such information,
the applicant shall identify the deletions in the text of the decision
considered necessary to protect the information. If the applicant
considers that the entire decision must be withheld from the public to
protect such information, the applicant must explain why. The applicant
will be given time, not less than twenty days, to request
reconsideration and seek court review before any contested portion of a
decision is made public over its objection. See Sec. 2.27 for
trademark applications.
* * * * *
9. In Sec. 1.17, remove and reserve paragraphs (b)-(d), and revise
paragraph (h) to read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(h) For filing a petition under one of the following sections which
refers to this paragraph: $130.00.
Sec. 1.12 - for access to an assignment record.
Sec. 1.14 - for access to an application.
Sec. 1.47 - for filing by other than all the inventors or a person
not the inventor.
Sec. 1.53(e) - to accord a filing date.
Sec. 1.59 - for expungement and return of information.
Sec. 1.84 - for accepting color drawings or photographs.
Sec. 1.91 - for entry of a model or exhibit.
Sec. 1.102 - to make an application special.
Sec. 1.103(a) - to suspend action in an application.
Sec. 1.138(c) - to expressly abandon an application to avoid
publication.
Sec. 1.182 - for decision on a question not specifically provided
for.
Sec. 1.183 - to suspend the rules.
Sec. 1.295 - for review of refusal to publish a statutory invention
registration.
Sec. 1.313 - to withdraw an application from issue.
Sec. 1.314 - to defer issuance of a patent.
Sec. 1.377 - for review of decision refusing to accept and record
payment of a maintenance fee filed prior to expiration
of a patent.
Sec. 1.378(e) - for reconsideration of decision on petition
refusing to accept delayed payment of maintenance fee in
an expired patent.
Sec. 1.741(b) - to accord a filing date to an application under
Sec. 1.740 for extension of a patent term.
Sec. 5.12 - for expedited handling of a foreign filing license.
Sec. 5.15 - for changing the scope of a license.
Sec. 5.25 - for retroactive license.
Sec. 104.3 - for waiver of a rule in Part 104 of this title.
* * * * *
10. Revise Sec. 1.36 to read as follows:
Sec. 1.36 Revocation of power of attorney; withdrawal of patent
attorney or agent.
(a) A power of attorney, pursuant to Sec. 1.32(b), may be revoked
at any stage in the proceedings of a case by the applicant for patent
(Sec. 1.41(b)) or the assignee of the entire interest. A
registered patent attorney or patent agent will be notified of the
revocation of the power of attorney. Where power of attorney is given
to the patent practitioners associated with a Customer Number (Sec.
1.32(b)(2)(iii)), the practitioners so appointed will also be notified
of the revocation of the power of attorney when the power of attorney
to the practitioners associated with the Customer Number is revoked.
The notice of revocation will be mailed to the correspondence address
for the application (Sec. 1.33) in effect before the revocation. An
assignment will not of itself operate as a revocation of a power
previously given, but the assignee of the entire interest may revoke
previous powers and give another power of attorney as provided in Sec.
1.32(b) of the assignee's own selection. See Sec. 41.5 of this title
for proceedings before the Board of Patent Appeals and Interferences.
(b) A registered patent attorney or patent agent who has been given
a power of attorney pursuant to Sec. 1.32(b) may withdraw upon
application to and approval by the Director. The applicant or patent
owner will be notified of the withdrawal of the registered patent
attorney or patent agent. Where power of attorney is given to the
patent practitioners associated with a Customer Number, a request to
delete all of the patent practitioners associated with the Customer
Number may not be granted if an applicant has given power of attorney
to the patent practitioners associated with the Customer Number and
insufficient time remains for the applicant to file a reply. See Sec.
41.5(c) of this title for withdrawal in a proceeding before the Board
of Patent Appeals and Interferences.
11. Amend Sec. 1.48 to revise paragraphs (a)-(c) and (i), and to
add paragraph (j), to read as follows:
Sec. 1.48 Correction of inventorship in a patent application, other
than a reissue application, pursuant to 35 U.S.C. 116.
(a) Nonprovisional application after oath/declaration filed. If the
inventive entity is set forth in error in an executed Sec. 1.63 oath
or declaration in a nonprovisional application, and such error arose
without any deceptive intention on the part of the person named as an
inventor in error or on the part of the person who through error was
not named as an inventor, the inventorship of the nonprovisional
application may be amended to name only the actual inventor or
inventors. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the
desired inventorship change;
(2) A statement from each person being added as an inventor and
from each person being deleted as an inventor that the error in
inventorship occurred without deceptive intention on his or her part;
(3) An oath or declaration by the actual inventor or inventors as
required by Sec. 1.63 or as permitted by Secs. 1.42, 1.43 or
Sec. 1.47;
(4) The processing fee set forth in Sec. 1.17(i); and
(5) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Sec. 3.73(b) of
this chapter).
(b) Nonprovisional application - fewer inventors due to amendment or
cancellation of claims. If the correct inventors are named in a
nonprovisional application, and the prosecution of the nonprovisional
application results in the amendment or cancellation of claims so that
fewer than all of the currently named inventors are the actual
inventors of the invention being claimed in the nonprovisional
application, an amendment must be filed requesting deletion of the name
or names of the person or persons who are not inventors of the
invention being claimed. Amendment of the inventorship requires:
(1) A request, signed by a party set forth in Sec. 1.33(b), to
correct the inventorship that identifies the named inventor or
inventors being deleted and acknowledges that the inventor's invention
is no longer being claimed in the nonprovisional application; and
(2) The processing fee set forth in Sec. 1.17(i).
(c) Nonprovisional application - inventors added for claims to
previously unclaimed subject matter. If a nonprovisional application
discloses unclaimed subject matter by an inventor or inventors not
named in the application, the application may be amended to add claims
to the subject matter and name the correct inventors for the
application. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the
desired inventorship change;
(2) A statement from each person being added as an inventor that
the addition is necessitated by amendment of the claims and that the
inventorship error occurred without deceptive intention on his or her
part;
(3) An oath or declaration by the actual inventors as required by
Sec. 1.63 or as permitted by Secs. 1.42, 1.43, or Sec. 1.47;
(4) The processing fee set forth in Sec. 1.17(i); and
(5) If an assignment has been executed by any of the original named
inventors, the written consent of the assignee (see Sec. 3.73(b) of
this chapter).
* * * * *
(i) Correction of inventorship in patent. See Sec. 1.324 for
correction of inventorship in a patent.
(j) Correction of inventorship in a contested case before the Board
of Patent Appeals and Interferences. In a contested case under part 41,
subpart D, of this title, a request for correction of an application
must be in the form of a motion under Sec. 41.121(a)(2) of this title
and must comply with the requirements of this section.
12. In Sec. 1.55, revise paragraphs (a)(3) and (a)(4) to read as
follows:
Sec. 1.55 Claim for foreign priority.
(a) * * *
(3) The Office may require that the claim for priority and the
certified copy of the foreign application be filed earlier than
provided in paragraphs (a)(1) or (a)(2) of this section:
(i) When the application becomes involved in an interference (see
Sec. 41.202 of this title),
(ii) When necessary to overcome the date of a reference relied upon
by the examiner, or
(iii) When deemed necessary by the examiner.
(4)(i) An English language translation of a non-English language
foreign application is not required except:
(A) When the application is involved in an interference (see Sec.
41.202 of this title),
(B) When necessary to overcome the date of a reference relied upon
by the examiner, or
(C) When specifically required by the examiner.
(ii) If an English language translation is required, it must be
filed together with a statement that the translation of the certified
copy is accurate.
* * * * *
13. In Sec. 1.59, revise paragraph (a)(1) to read as follows:
Sec. 1.59 Expungement of information or copy of papers in application
file.
(a)(1) Information in an application will not be expunged and
returned, except as provided in paragraph (b) of this section or Sec.
41.7(a) of this title.
* * * * *
14. In Sec. 1.103, revise paragraph (g) to read as follows:
Sec. 1.103 Suspension of action by the Office.
* * * * *
(g) Statutory invention registration. The Office will suspend action by
the Office for the entire pendency of an application if the Office has
accepted a request to publish a statutory invention registration in the
application, except for purposes relating to patent interference
proceedings under part 41, subpart D, of this title.
15. Revise Sec. 1.112 to read as follows:
Sec. 1.112 Reconsideration before final action.
After reply by applicant or patent owner (Sec. 1.111 or Sec.
1.945) to a non-final action and any comments by an inter partes
reexamination requester (Sec. 1.947), the application or the patent
under reexamination will be reconsidered and again examined. The
applicant, or in the case of a reexamination proceeding the patent
owner and any third party requester, will be notified if claims are
rejected, objections or requirements made, or decisions favorable to
patentability are made, in the same manner as after the first
examination (Sec. 1.104). Applicant or patent owner may reply to such
Office action in the same manner provided in Sec. 1.111 or Sec.
1.945, with or without amendment, unless such Office action indicates
that it is made final (Sec. 1.113) or an appeal (Sec. 41.31 of this
title) has been taken (Sec. 1.116), or in an inter partes
reexamination, that it is an action closing prosecution (Sec. 1.949)
or a right of appeal notice (Sec. 1.953).
16. In Sec. 1.113, revise paragraph (a) to read as follows:
Sec. 1.113 Final rejection or action.
(a) On the second or any subsequent examination or consideration by
the examiner the rejection or other action may be made final, whereupon
applicants, or for ex parte reexaminations filed under Sec. 1.510,
patent owner's reply is limited to appeal in the case of rejection of
any claim (Sec. 41.31 of this title), or to amendment as specified in
Sec. 1.114 or Sec. 1.116. Petition may be taken to the Director in
the case of objections or requirements not involved in the rejection of
any claim (Sec. 1.181). Reply to a final rejection or action must
comply with Sec. 1.114 or paragraph (c) of this section. For final
actions in an inter partes reexamination filed under Sec. 1.913, see
Sec. 1.953.
* * * * *
17. In Sec. 1.114, revise paragraph (d) to read as follows:
Sec. 1.114 Request for continued examination.
* * * * *
(d) If an applicant timely files a submission and fee set forth in
Sec. 1.17(e), the Office will withdraw the finality of any Office
action and the submission will be entered and considered. If an
applicant files a request for continued examination under this section
after appeal, but prior to a decision on the appeal, it will be treated
as a request to withdraw the appeal and to reopen prosecution of the
application before the examiner. An appeal brief (Sec. 41.37 of this
title) or a reply brief (Sec. 41.41 of this title), or related papers,
will not be considered a submission under this section.
* * * * *
18. Revise Sec. 1.116 to read as follows:
Sec. 1.116 Amendments and affidavits or other evidence after final action.
(a) An amendment after final action must comply with Sec. 1.114 or
this section.
(b) After a final rejection or other final action (Sec. 1.113) in
an application or in an ex parte reexamination filed under Sec. 1.510,
or an action closing prosecution (Sec. 1.949) in an inter partes
reexamination filed under Sec. 1.913, but before or with any appeal
(Sec. 41.31 or Sec. 41.61).
(1) An amendment may be made canceling claims or complying with any
requirement of form expressly set forth in a previous Office action;
(2) An amendment presenting rejected claims in better form for
consideration on appeal may be admitted;
(3) An amendment touching the merits of the application or patent
under reexamination may be admitted upon a showing of good and
sufficient reasons why the amendment is necessary and was not earlier
presented.
(c) The admission of, or refusal to admit, any amendment after a
final rejection, a final action, an action closing prosecution, or any
related proceedings will not operate to relieve the application or
reexamination proceeding from its condition as subject to appeal or to
save the application from abandonment under Sec. 1.135, or the
reexamination prosecution from termination under Sec. 1.550(d) or
Sec. 1.957(b) or limitation of further prosecution under Sec. 1.957(c).
(d)(1) Notwithstanding the provisions of paragraph (b) of this
section, no amendment other than canceling claims, where such
cancellation does not affect the scope of any other pending claim in
the proceeding, can be made in an inter partes reexamination proceeding
after the right of appeal notice under Sec. 1.953 except as provided
in Sec. 1.981 or as permitted by Sec. 41.77(b)(1).
(2) Notwithstanding the provisions of paragraph (b) of this
section, an amendment made after a final rejection or other final
action (Sec. 1.113) in an ex parte reexamination filed under Sec.
1.510, or an action closing prosecution (Sec. 1.949) in an inter
partes reexamination filed under Sec. 1.913 may not cancel claims
where such cancellation affects the scope of any other pending claim in
the reexamination proceeding except as provided in Sec. 1.981 or as
permitted by Sec. 41.77(b)(1).
(e) An affidavit or other evidence submitted after a final
rejection or other final action (Sec. 1.113) in an application or in
an ex parte reexamination filed under Sec. 1.510, or an action closing
prosecution (Sec. 1.949) in an inter partes reexamination filed under
Sec. 1.913 but before or with any appeal (Sec. 41.31 or Sec. 41.61),
may be admitted upon a showing of good and sufficient reasons why the
affidavit or other evidence is necessary and was not earlier presented.
(f) Notwithstanding the provisions of paragraph (e) of this
section, no affidavit or other evidence can be made in an inter partes
reexamination proceeding after the right of appeal notice under Sec.
1.953 except as provided in Sec. 1.981 or as permitted by Sec. 41.77(b)(1).
(g) After decision on appeal, amendments, affidavits and other
evidence can only be made as provided in Secs. 1.198 and 1.981, or
to carry into effect a recommendation under Sec. 41.50(c).
19. In Sec. 1.131, revise paragraph (a)(1) to read as follows:
Sec. 1.131 Affidavit or declaration of prior invention.
(a) * * *
(1) The rejection is based upon a U.S. patent or U.S. patent
application publication of a pending or patented application to another
or others that claims interfering subject matter as defined in Sec.
41.203(a) of this title, in which case an applicant may suggest an
interference pursuant to Sec. 41.202(a); or
* * * * *
20. In Sec. 1.136, revise paragraphs (a)(1), (a)(2), and (b) to
read as follows:
Sec. 1.136 Extensions of time.
(a)(1) If an applicant is required to reply within a nonstatutory
or shortened statutory time period, applicant may extend the time
period for reply up to the earlier of the expiration of any maximum
period set by statute or five months after the time period set for
reply, if a petition for an extension of time and the fee set in Sec.
1.17(a) are filed, unless:
(i) Applicant is notified otherwise in an Office action;
(ii) The reply is a reply brief submitted pursuant to Sec. 41.41
of this title;
(iii) The reply is a request for an oral hearing submitted pursuant
to Sec. 41.47(a) of this title;
(iv) The reply is to a decision by the Board of Patent Appeals and
Interferences pursuant to Sec. 1.304 or to Sec. 41.50 or Sec. 41.52
of this title; or
(v) The application is involved in a contested case (Sec.
41.101(a) of this title).
(2) The date on which the petition and the fee have been filed is
the date for purposes of determining the period of extension and the
corresponding amount of the fee. The expiration of the time period is
determined by the amount of the fee paid. A reply must be filed prior
to the expiration of the period of extension to avoid abandonment of
the application (Sec. 1.135), but in no situation may an applicant
reply later than the maximum time period set by statute, or be granted
an extension of time under paragraph (b) of this section when the
provisions of this paragraph are available. See Sec. 1.304 for
extensions of time to appeal to the U.S. Court of Appeals for the
Federal Circuit or to commence a civil action; Sec. 1.550(c) for
extensions of time in ex parte reexamination proceedings, Sec. 1.956
for extensions of time in inter partes reexamination proceedings; and
Secs. 41.4(a) and 41.121(a)(3) of this title for extensions of
time in contested cases before the Board of Patent Appeals and
Interferences.
* * * * *
(b) When a reply cannot be filed within the time period set for
such reply and the provisions of paragraph (a) of this section are not
available, the period for reply will be extended only for sufficient
cause and for a reasonable time specified. Any request for an extension
of time under this paragraph must be filed on or before the day on
which such reply is due, but the mere filing of such a request will not
affect any extension under this paragraph. In no situation can any
extension carry the date on which reply is due beyond the maximum time
period set by statute. See Sec. 1.304 for extensions of time to appeal
to the U.S. Court of Appeals for the Federal Circuit or to commence a
civil action; Sec. 1.550(c) for extensions of time in ex parte
reexamination proceedings; and Sec. 1.956 for extensions of time in
inter partes reexamination proceedings.
* * * * *
21. In Sec. 1.181, revise paragraph (a)(3) to read as follows:
Sec. 1.181 Petition to the Director.
(a) * * *
(3) To invoke the supervisory authority of the Director in
appropriate circumstances. For petitions involving action of the Board
of Patent Appeals and Interferences, see Sec. 41.3 of this title.
* * * * *
22. Revise Sec. 1.191 to read as follows:
Sec. 1.191 Appeal to Board of Patent Appeals and Interferences.
Appeals to the Board of Patent Appeals and Interferences under 35
U.S.C. 134(a) and (b) are conducted according to part 41, subpart B, of
this title.
Secs. 1.192-1.196 [Removed and reserved]
23. Remove and reserve Secs. 1.192-1.196.
24. Revise Sec. 1.197 to read as follows:
Sec. 1.197 Return of Jurisdiction from the Board of Patent Appeals
and Interferences; termination of proceedings.
(a) Jurisdiction over an application or patent under ex parte
reexamination proceeding passes to the examiner after a decision by the
Board of Patent Appeals and Interferences upon transmittal of the file
to the examiner, subject to appellant's right of appeal or other
review, for such further action by appellant or by the examiner, as the
condition of the application or patent under ex parte reexamination
proceeding may require, to carry into effect the decision of the Board
of Patent Appeals and Interferences.
(b) Proceedings on an application are considered terminated by the
dismissal of an appeal or the failure to timely file an appeal to the
court or a civil action (Sec. 1.304) except: Where claims stand
allowed in an application; or where the nature of the decision requires
further action by the examiner. The date of termination of proceedings
on an application is the date on which the appeal is dismissed or the
date on which the time for appeal to the court or review by civil
action (Sec. 1.304) expires. If an appeal to the court or a civil
action has been filed, proceedings on an application are considered
terminated when the appeal or civil action is terminated. An appeal to
the U.S. Court of Appeals for the Federal Circuit is terminated when
the mandate is issued by the Court. A civil action is terminated when
the time to appeal the judgment expires.
25. Revise Sec. 1.198 to read as follows:
Sec. 1.198 Reopening after a final decision of the Board of Patent
Appeals and Interferences.
When a decision by the Board of Patent Appeals and Interferences on
appeal has become final for judicial review, prosecution of the
proceeding before the primary examiner will not be reopened or
reconsidered by the primary examiner except under the provisions of
Sec. 1.114 or Sec. 41.50 without the written authority of the
Director, and then only for the consideration of matters not already
adjudicated, sufficient cause being shown.
26. In Sec. 1.248, revise paragraph (c) to read as follows:
Sec. 1.248 Service of papers; manner of service; proof of service in
cases.
* * * * *
(c) See Sec. 41.105(f) of this title for service of papers in
contested cases before the Board of Patent Appeals and Interferences.
27. In Sec. 1.292, revise paragraphs (a) and (c) to read as
follows:
Sec. 1.292 Public use proceedings.
(a) When a petition for the institution of public use proceedings,
supported by affidavits or declarations is found, on reference to the
examiner, to make a prima facie showing that the invention claimed in
an application believed to be on file had been in public use or on sale
more than one year before the filing of the application, a hearing may
be had before the Director to determine whether a public use proceeding
should be instituted. If instituted, the Director may designate an
appropriate official to conduct the public use proceeding, including
the setting of times for taking testimony, which shall be taken as
provided by part 41, subpart D, of this title. The petitioner will be
heard in the proceedings but after decision therein will not be heard
further in the prosecution of the application for patent.
* * * * *
(c) A petition for institution of public use proceedings shall not
be filed by a party to an interference as to an application involved in
the interference. Public use and on sale issues in an interference
shall be raised by a motion under Sec. 41.121(a)(1) of this title.
28. In Sec. 1.295, revise paragraph (b) to read as follows:
Sec. 1.295 Review of decision finally refusing to publish a statutory
invention registration.
* * * * *
(b) Any requester who is dissatisfied with a decision finally
rejecting claims pursuant to 35 U.S.C. 112 may obtain review of the
decision by filing an appeal to the Board of Patent Appeals and
Interferences pursuant to Sec. 41.31 of this title. If the decision
rejecting claims pursuant to 35 U.S.C. 112 is reversed, the request for
a statutory invention registration will be approved and the
registration published if all of the other provisions of Sec. 1.293
and this section are met.
29. In Sec. 1.302, revise paragraph (b) to read as follows:
Sec. 1.302 Notice of appeal.
* * * * *
(b) In interferences, the notice must be served as provided in
Sec. 41.106(f) of this title.
* * * * *
30. In Sec. 1.303, revise paragraph (c) to read as follows:
Sec. 1.303 Civil action under 35 U.S.C. 145, 146, 306.
* * * * *
(c) A notice of election under 35 U.S.C. 141 to have all further
proceedings on review conducted as provided in 35 U.S.C. 146 must be
filed with the Office of the Solicitor and served as provided in Sec.
41.106(f) of this title.
* * * * *
31. In Sec. 1.304, revise paragraphs (a)(1) and (a)(2) to read as
follows:
Sec. 1.304 Time for appeal or civil action.
(a)(1) The time for filing the notice of appeal to the U.S. Court
of Appeals for the Federal Circuit (Sec. 1.302) or for commencing a
civil action (Sec. 1.303) is two months from the date of the decision
of the Board of Patent Appeals and Interferences. If a request for
rehearing or reconsideration of the decision is filed within the time
period provided under Sec. 41.52(a), Sec. 41.79(a), or Sec.
41.127(d) of this title, the time for filing an appeal or commencing a
civil action shall expire two months after action on the request. In
contested cases before the Board of Patent Appeals and Interferences,
the time for filing a cross-appeal or cross-action expires:
(i) Fourteen days after service of the notice of appeal or the
summons and complaint; or
(ii) Two months after the date of decision of the Board of Patent
Appeals and Interferences, whichever is later.
(2) The time periods set forth in this section are not subject to
the provisions of Sec. 1.136, Sec. 1.550(c), or Sec. 1.956, or of
Sec. 41.4 of this title.
* * * * *
32. In Sec. 1.322, revise paragraph (a)(3) to read as follows:
Sec. 1.322 Certificate of correction of Office mistake.
(a) * * *
(3) If the request relates to a patent involved in an interference,
the request must comply with the requirements of this section and be
accompanied by a motion under Sec. 41.121(a)(2) of this title.
* * * * *
33. Revise Sec. 1.323 to read as follows:
Sec. 1.323 Certificate of correction of applicant's mistake.
The Office may issue a certificate of correction under the
conditions specified in 35 U.S.C. 255 at the request of the patentee or
the patentee's assignee, upon payment of the fee set forth in Sec.
1.20(a). If the request relates to a patent involved in an
interference, the request must comply with the requirements of this
section and be accompanied by a motion under Sec. 41.121(a)(2) of this
title.
34. In Sec. 1.324, revise paragraphs (a) and (c), and add
paragraph (d), to read as follows:
Sec. 1.324 Correction of inventorship in patent, pursuant to 35
U.S.C. 256.
(a) Whenever through error a person is named in an issued patent as
the inventor, or through error an inventor is not named in an issued
patent and such error arose without any deceptive intention on his or
her part, the Director may, on petition, or on order of a court before
which such matter is called in question, issue a certificate naming
only the actual inventor or inventors. A petition to correct
inventorship of a patent involved in an interference must comply with
the requirements of this section and must be accompanied by a motion
under Sec. 41.121(a)(2) of this title.
* * * * *
(c) For correction of inventorship in an application, see
Secs. 1.48 and 1.497, and in a contested case before the Board of
Patent Appeals and Interferences, see Sec. 41.121(a)(2) of this title.
(d) Correction of inventorship in a contested case before the Board
of Patent Appeals and Interferences. In a contested case under part 41,
subpart D, of this title, a request for correction of a patent must be
in the form of a motion under Sec. 41.121(a)(2) of this title.
35. In Sec. 1.565, revise paragraph (e) to read as follows:
Sec. 1.565 Concurrent Office proceedings which include an ex parte
reexamination proceeding.
* * * * *
(e) If a patent in the process of ex parte reexamination is or
becomes involved in an interference, the Director may suspend the
reexamination or the interference. The Director will not consider a
request to suspend an interference unless a motion (Sec. 41.121(a)(3)
of this title) to suspend the interference has been presented to, and
denied by, an administrative patent judge, and the request is filed
within ten (10) days of a decision by an administrative patent judge
denying the motion for suspension or such other time as the
administrative patent judge may set. For concurrent inter partes
reexamination and interference of a patent, see Sec. 1.993.
Secs. 1.601-1.690 (Subpart E) [Removed and reserved]
36. Remove and reserve subpart E, consisting of Secs. 1.601
through 1.690, of part 1.
37. In Sec. 1.701, revise paragraph (c)(2)(ii) to read as follows:
Sec. 1.701 Extension of patent term due to examination delay under
the Uruguay Round Agreements Act (original applications, other than
designs, filed on or after June 8, 1995, and before May 29, 2000).
* * * * *
(c) * * *
(2) * * *
(ii) The number of days, if any, in the period beginning on the
date of mailing of an examiner's answer under Sec. 41.39 of this title
in the application under secrecy order and ending on the date the
secrecy order and any renewal thereof was removed;
* * * * *
38. In Sec. 1.703, revise paragraphs (a)(4), (b)(3)(ii), (b)(4),
(d)(2), and (e) to read as follows:
Sec. 1.703 Period of adjustment of patent term due to examination
delay.
(a) * * *
(4) The number of days, if any, in the period beginning on the day
after the date that is four months after the date an appeal brief in
compliance with Sec. 41.37 of this title was filed and ending on the
date of mailing of any of an examiner's answer under Sec. 41.39 of
this title, an action under 35 U.S.C. 132, or a notice of allowance
under 35 U.S.C. 151, whichever occurs first;
* * * * *
(b) * * *
(3) * * *
(ii) The number of days, if any, in the period beginning on the
date of mailing of an examiner's answer under Sec. 41.39 of this title
in the application under secrecy order and ending on the date the
secrecy order was removed;
* * * * *
(4) The number of days, if any, in the period beginning on the date
on which a notice of appeal to the Board of Patent Appeals and
Interferences was under 35 U.S.C. 134 and Sec. 41.31 of this title and
ending on the date of the last decision by the Board of Patent Appeals
and Interferences or by a Federal court in an appeal under 35 U.S.C.
141 or a civil action under 35 U.S.C. 145, or on the date of mailing of
either an action under 35 U.S.C. 132, or a notice of allowance under 35
U.S.C. 151, whichever occurs first, if the appeal did not result in a
decision by the Board of Patent Appeals and Interferences.
* * * * *
(d) * * *
(2) The number of days, if any, in the period beginning on the date
of mailing of an examiner's answer under Sec. 41.39 of this title in
the application under secrecy order and ending on the date the secrecy
order was removed;
* * * * *
(e) The period of adjustment under Sec. 1.702(e) is the sum of the
number of days, if any, in the period beginning on the date on which a
notice of appeal to the Board of Patent Appeals and Interferences was
filed under 35 U.S.C. 134 and Sec. 41.31 of this title and ending on
the date of a final decision in favor of the applicant by the Board of
Patent Appeals and Interferences or by a Federal court in an appeal
under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
* * * * *
39. In Sec. 1.704, revise paragraph (c)(9) to read as follows:
Sec. 1.704 Reduction of period of adjustment of patent term.
* * * * *
(c) * * *
(9) Submission of an amendment or other paper after a decision by
the Board of Patent Appeals and Interferences, other than a decision
designated as containing a new ground of rejection under Sec. 41.50(b)
of this title or statement under Sec. 41.50(c) of this title, or a
decision by a Federal court, less than one month before the mailing of
an Office action under 35 U.S.C. 132 or notice of allowance under 35
U.S.C. 151 that requires the mailing of a supplemental Office action or
supplemental notice of allowance, in which case the period of
adjustment set forth in Sec. 1.703 shall be reduced by the lesser of:
(i) The number of days, if any, beginning on the day after the
mailing date of the original Office action or notice of allowance and
ending on the mailing date of the supplemental Office action or notice
of allowance; or
(ii) Four months;
* * * * *
40. Revise Sec. 1.959 to read as follows:
Sec. 1.959 Appeal in inter partes reexamination.
Appeals to the Board of Patent Appeals and Interferences under 35
U.S.C. 134(c) are conducted according to part 41, subpart C, of this
title.
Secs. 1.961-1.977 [Removed and reserved]
41. Remove and reserve Secs. 1.961-1.977.
42. Revise Sec. 1.979 to read as follows:
Sec. 1.979 Return of Jurisdiction from the Board of Patent Appeals
and Interferences; termination of proceedings.
(a) Jurisdiction over an inter partes reexamination proceeding
passes to the examiner after a decision by the Board of Patent Appeals
and Interferences upon transmittal of the file to the examiner, subject
to each appellant's right of appeal or other review, for such further
action as the condition of the inter partes reexamination proceeding
may require, to carry into effect the decision of the Board of Patent
Appeals and Interferences.
(b) Upon termination of the appeal before the Board of Patent
Appeals and Interferences (Sec. 41.83), if no further appeal has been
taken (Sec. 1.983), the inter partes reexamination proceeding will be
terminated and the Director will issue a certificate under Sec. 1.997
terminating the proceeding. If an appeal to the U.S. Court of Appeals
for the Federal Circuit has been filed, that appeal is considered
terminated when the mandate is issued by the Court.
43. Revise Sec. 1.981 to read as follows:
Sec. 1.981 Reopening after a final decision of the Board of Patent
Appeals and Interferences.
When a decision by the Board of Patent Appeals and Interferences on
appeal has become final for judicial review, prosecution of the inter
partes reexamination proceeding will not be reopened or reconsidered by
the primary examiner except under the provisions of Sec. 41.77 without
the written authority of the Director, and then only for the
consideration of matters not already adjudicated, sufficient cause
being shown.
44. Revise Sec. 1.993 to read as follows:
Sec. 1.993 Suspension of concurrent interference and inter partes
reexamination proceeding.
If a patent in the process of inter partes reexamination is or
becomes involved in an interference, the Director may suspend the inter
partes reexamination or the interference. The Director will not
consider a request to suspend an interference unless a motion under
Sec. 41.121(a)(3) of this title to suspend the interference has been
presented to, and denied by, an administrative patent judge and the
request is filed within ten (10) days of a decision by an
administrative patent judge denying the motion for suspension or such
other time as the administrative patent judge may set.
PART 5 - SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND
FILE APPLICATIONS IN FOREIGN COUNTRIES
45. The authority citation for Part 5 continues to read as follows:
Authority: 35 U.S.C.2(b)(2), 41, 181-188, as amended by the
patent Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418,
102 Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C.
2751 et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.CX.
2011 et seq.; the Nuclear Non Proliferation Act of 1978, 22 U.S.C.
3201 et seq.; and the delegations in the regulations under these
Acts of the Commissioner (15 CFR 3701.10(j), 22 CFR 125.04, and 10
CFR 810.7).
45a. In Sec. 5.3, revise paragraph (b) to read as follows:
Sec. 5.3 Prosecution of application under secrecy orders; withholding
patent.
* * * * *
(b) An interference will not be declared involving a national
application under secrecy order. An applicant whose application is
under secrecy order may suggest an interference (Sec. 41.202(a)), but
the Office will not act on the request while the application remains
under a secrecy order.
* * * * *
PART 10 - REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE
46. The authority citation for Part 10 continues to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 31,
32, 41.
46a. In Sec. 10.23, revise paragraph (c)(7) to read as follows:
Sec. 10.23 Misconduct.
* * * * *
(c) * * *
(7) Knowingly withholding from the Office information identifying a
patent or patent application of another from which one or more claims
have been copied. See Sec. 41.202(a)(1) of this title.
* * * * *
47. Add part 41 to read as follows:
PART 41 - PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
Subpart A - General Provisions
Sec.
41.1 Policy.
41.2 Definitions.
41.3 Petitions.
41.4 Timeliness.
41.5 Counsel.
41.6 Public availability of Board records.
41.7 Management of the record.
41.8 Mandatory notices.
41.9 Action by owner.
41.20 Fees.
Subpart B - Ex parte Appeals to the Board
41.30 Definitions.
41.31 Appeal to Board.
41.33 Amendments and affidavits or other evidence after appeal.
41.35 Jurisdiction over appeal.
41.37 Appeal brief.
41.39 Examiner's answer.
41.41 Reply brief.
41.43 Examiner's response to reply brief.
41.47 Oral hearing.
41.50 Decisions and other actions by the Board.
41.52 Rehearing.
41.54 Action following decision.
41.56 Termination of appeal.
Subpart C - Inter Partes Appeals to the Board
41.60 Definitions.
41.61 Notice of appeal and cross appeal to Board.
41.63 Amendments and affidavits or other evidence after appeal.
41.64 Jurisdiction over appeal in inter partes reexamination.
41.66 Time for filing briefs.
41.67 Appellant's brief.
41.68 Respondent's brief.
41.69 Examiner's answer.
41.71 Rebuttal brief.
41.73 Oral hearing.
41.77 Decisions and other actions by the Board.
41.79 Rehearing.
41.81 Action following decision.
41.83 Termination of appeal.
Subpart D - Contested Cases
41.100 Definitions.
41.101 Notice of proceeding.
41.102 Completion of examination.
41.103 Jurisdiction over involved files.
41.104 Conduct of contested case.
41.105 Ex parte communications.
41.106 Filing and service.
41.107 [Reserved].
41.108 Lead counsel.
41.109 Access to and copies of Office records.
41.110 Filing claim information.
41.120 Notice of basis for relief.
41.121 Motions.
41.122 New arguments in opposition or reply.
41.123 Time for acting on motions.
41.124 Oral argument.
41.125 Decisions on motions.
41.126 Arbitration.
41.127 Judgment.
41.128 Termination.
41.129 Sanctions.
41.150 Discovery.
41.151 Admissibility.
41.152 Applicability of the Federal Rules of Evidence.
41.153 Records of the United States Patent and Trademark Office.
41.154 Form of evidence.
41.155 Objection; motion to exclude; motion in limine.
41.156 Compelling testimony and production.
41.157 Taking testimony.
41.158 Expert testimony; tests and data.
Subpart E - Patent Interferences
41.200 Procedure; pendency.
41.201 Definitions.
41.202 Suggesting an interference.
41.203 Declaration.
41.204 Notice of basis for relief.
41.205 Settlement agreements.
41.206 Common interests in the invention.
41.207 Presumptions.
41.208 Content of substantive and responsive motions.
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 135.
Subpart A - General Provisions
Sec. 41.1 Policy.
(a) Scope. This Part 41 governs proceedings before the Board of
Patent Appeals and Interferences. Sections 1.1 to 1.36 and 1.181 to
1.183 of this title also apply to practice before the Board, as do
other sections of part 1 of this title that are cited in this part 41.
(b) Construction. The provisions of this Part 41 shall be construed
to secure the just, speedy, and inexpensive resolution of every
proceeding before the Board.
(c) Decorum. Each party must act with courtesy and decorum in all
proceedings before the Board, including interactions with other
parties.
Sec. 41.2 Definitions.
Unless otherwise clear from the context, the following definitions
apply to proceedings under this part:
Affidavit means affidavit, declaration under Sec. 1.68 of this
title, or statutory declaration under 28 U.S.C. 1746. A transcript of
an ex parte deposition may be used as an affidavit in a contested case.
Board means the Board of Patent Appeals and Interferences and
includes:
(1) For a final Board:
(i) In an appeal or contested case, a panel of the Board.
(ii) In a proceeding under Sec. 41.3, the Chief Administrative
Patent Judge or another official acting under an express delegation
from the Chief Administrative Patent Judge.
(2) For non-final actions, a Board member or employee acting with
the authority of the Board.
Board member means the Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office,
the Deputy Under Secretary of Commerce for Intellectual Property and
Deputy Director of the United States Patent and Trademark Office, the
Commissioner for Patents, the Commissioner for Trademarks, and the
administrative patent judges.
Contested case means a Board proceeding other than an appeal under
35 U.S.C. 134 or a petition under Sec. 41.3. An appeal in an inter
partes reexamination is not a contested case.
Final means, with regard to a Board action, final for the purposes
of judicial review. A decision is final only if:
(1) In a panel proceeding. The decision is rendered by a panel,
disposes of all issues with regard to the party seeking judicial
review, and does not indicate that further action is required; and
(2) In other proceedings. The decision disposes of all issues or
the decision states it is final.
Hearing means consideration of the issues of record. Rehearing
means reconsideration.
Office means United States Patent and Trademark Office.
Panel means at least three Board members acting in a panel
proceeding.
Panel proceeding means a proceeding in which final action is
reserved by statute to at least three Board members, but includes a
non-final portion of such a proceeding whether administered by panel or
not.
Party, in this part, means any entity participating in a Board
proceeding, other than officers and employees of the Office, including:
(1) An appellant;
(2) A participant in a contested case;
(3) A petitioner; and
(4) Counsel for any of the above, where context permits.
Sec. 41.3 Petitions.
(a) Deciding official. Petitions must be addressed to the Chief
Administrative Patent Judge. A panel or an administrative patent judge
may certify a question of policy to the Chief Administrative Patent
Judge for decision. The Chief Administrative Patent Judge may delegate
authority to decide petitions.
(b) The following matters are not subject to petition:
(1) Issues committed by statute to a panel, and
(2) In pending contested cases, procedural issues. See Sec.
41.121(a)(3) and Sec. 41.125(c).
(c) Petition fee. The fee set in Sec. 41.20(a) must accompany any
petition under this section except no fee is required for a petition
under this section seeking supervisory review.
(d) Effect on proceeding. The filing of a petition does not stay
the time for any other action in a Board proceeding.
(e) Time for action.
(1) Except as otherwise provided in this part or as the Board may
authorize in writing, a party may:
(i) File the petition within 14 calendar days from the date of the
action from which the party is requesting relief, and
(ii) File any request for reconsideration of a petition decision
within 14 calendar days of the decision on petition or such other time
as the Board may set.
(2) A party may not file an opposition or a reply to a petition
without Board authorization.
Sec. 41.4 Timeliness.
(a) Extensions of time. Extensions of time will be granted only on
a showing of good cause except as otherwise provided by rule.
(b) Late filings. Late filings will not be considered absent a
showing of excusable neglect or a Board determination that
consideration on the merits would be in the interest of justice.
(c) Scope. This section governs all proceedings before the Board,
but does not apply to Board-related proceedings outside the Board, such
as:
(1) Seeking judicial review (see Secs. 1.301-1.304 of this
title) or
(2) Extensions during prosecution (see Sec. 1.136 of this title).
Sec. 41.5 Counsel.
While the Board has jurisdiction:
(a) Appearance pro hac vice. The Board may authorize a person other
than a patent practitioner to appear as counsel in a specific
proceeding.
(b) Disqualification. (1) The Board may disqualify counsel in a
specific proceeding after notice and an opportunity to be heard.
(2) A decision to disqualify is not final for the purposes of
judicial review until certified by the Chief Administrative Patent
Judge.
(c) Withdrawal. Counsel may not withdraw from a proceeding before
the Board unless the Board authorizes such withdrawal.
(d) Procedure. The Board may institute a proceeding under this
section on its own or a party in a contested case may request relief
under this section.
(e) Referral to the Director of Enrollment and Discipline. The
Board may refer a question arising under paragraphs (a) or (b) of this
section to the Director of Enrollment and Discipline for action.
Sec. 41.6 Public availability of Board records.
(a) Publication. - (1) Generally. Any Board action is available for
public inspection without a party's permission if rendered in a file
open to the public pursuant to Sec. 1.11 of this title or in an
application that has been published in accordance with Secs. 1.211
through 1.221 of this title. The Office may independently publish any
Board action that is available for public inspection.
(2) Determination of special circumstances. Any Board action not
publishable under paragraph (a)(1) of this section may be published or
made available for public inspection if the Director believes that
special circumstances warrant publication and a party does not, within
two months after being notified of the intention to make the action
public, object in writing on the ground that the action discloses the
objecting party's trade secret or other confidential information and
states with specificity that such information is not otherwise publicly
available. If the action discloses such information, the party shall
identify the deletions in the text of the action considered necessary
to protect the information. If the affected party considers that the
entire action must be withheld from the public to protect such
information, the party must explain why. The party will be given time,
not less than twenty days, to request reconsideration and seek court
review before any contested portion of the action is made public over
its objection.
(b) Record of proceeding. - (1) The record of a Board proceeding is
available to the public unless a patent application not otherwise
available to the public is involved.
(2) Notwithstanding paragraph (b)(1) of this section, after a final
Board action in or termination of a Board proceeding, the record of the
Board proceeding will be made available to the public if any involved
file is or becomes open to the public under Sec. 1.11 of this title or
an involved application is or becomes published under Secs. 1.211-
1.221 of this title.
Sec. 41.7 Management of the record.
(a) The Board may expunge any paper that is not authorized under
this part or in a Board order, or that is filed contrary to a Board
order.
(b) A party may not file a paper previously filed in the same Board
proceeding, not even as an exhibit or appendix, without Board
authorization.
Sec. 41.8 Mandatory notices.
In an appeal (Secs. 41.37, 41.67, or Sec. 41.68) or at the
initiation of a contested case (Sec. 41.101), and within 20 days of
any change during the proceeding, a party must identify:
(a) Its real party-in-interest, and
(b) Each judicial or administrative proceeding that could affect,
or be affected by, the Board proceeding, specifically including
judicial review of the Board proceeding.
Sec. 41.9 Action by owner.
(a) Entire interest. An owner of the entire interest in an
application or patent involved in a Board proceeding may act in the
proceeding to the exclusion of the inventor (see Sec. 3.73(b) of this
title).
(b) Part interest. An owner of a part interest in an application or
patent involved in a Board proceeding may petition to act in the
proceeding to the exclusion of an inventor or a co-owner. The petition
must show the inability or refusal of an inventor or co-owner to
prosecute the proceeding or other cause why it is in the interest of
justice to permit the owner of a part interest to act in the
proceeding. An order granting the petition may set conditions on the
actions of the parties during the proceeding.
Sec. 41.20 Fees.
(a) Petition fee. The fee for filing a petition under this part
is - $130.00.
(b) Appeal fees.
(1) For filing a notice of appeal from the examiner to the Board:
(i) By a small entity (Sec. 1.27(a) of this title) - $165.00.
(ii) By other than a small entity - $330.00.
(2) In addition to the fee for filing a notice of appeal, for
filing a brief in support of an appeal:
(i) By a small entity (Sec. 1.27(a) of this title) - $165.00.
(ii) By other than a small entity - $330.00.
(3) For filing a request for an oral hearing before the Board in an
appeal under 35 U.S.C. 134:
(i) By a small entity (Sec. 1.27(a) of this title) - $145.00
(ii) By other than a small entity - $290.00.
Subpart B - Ex parte Appeals to the Board
Sec. 41.30 Definitions.
In addition to the definitions in Sec. 41.2, the following
definitions apply to proceedings under this subpart unless otherwise
clear from the context:
Proceeding means either a national application for a patent, an
application for reissue of a patent, or an ex parte reexamination
proceeding. Appeal to the Board in an inter partes reexamination
proceeding is controlled by subpart C of this part.
Applicant means either the applicant in a national application for
a patent or the applicant in an application for reissue of a patent.
Owner means the owner of the patent undergoing ex parte
reexamination under Sec. 1.510 of this title.
Sec. 41.31 Appeal to Board.
(a) Who may appeal and how to file an appeal:
(1) Every applicant, any of whose claims has been twice or finally
(Sec. 1.113 of this title) rejected, may appeal the decision of the
examiner to the Board by filing a notice of appeal accompanied by the
fee set forth in Sec. 41.20(b)(1) within the time period provided
under Sec. 1.134 of this title for reply.
(2) Every owner of a patent under ex parte reexamination filed
under Sec. 1.510 of this title before November 29, 1999, any of whose
claims has been twice or finally (Sec. 1.113 of this title) rejected,
may appeal from the decision of the examiner to the Board by filing a
notice of appeal accompanied by the fee set forth in Sec. 41.20(b)(1)
within the time period provided under Sec. 1.134 of this title for
reply.
(3) Every owner of a patent under ex parte reexamination filed
under Sec. 1.510 of this title on or after November 29, 1999, any of
whose claims has been finally (Sec. 1.113 of this title) rejected, may
appeal from the decision of the examiner to the Board by filing a
notice of appeal accompanied by the fee set forth in Sec. 41.20(b)(1)
within the time period provided under Sec. 1.134 of this title for
reply.
(b) The signature requirement of Sec. 1.33 of this title does not
apply to a notice of appeal filed under this section.
(c) An appeal, when taken, must be taken from the rejection of all
claims under rejection which the applicant or owner proposes to
contest. Questions relating to matters not affecting the merits of the
invention may be required to be settled before an appeal can be
considered.
(d) The time periods set forth in paragraphs (a)(1)-(a)(3) of this
section are extendable under the provisions of Sec. 1.136 of this
title for patent applications and Sec. 1.550(c) of this title for ex
parte reexamination proceedings.
Sec. 41.33 Amendments and affidavits or other evidence after appeal.
(a) Amendments submitted after the date the proceeding has been
appealed pursuant to Sec. 41.31(a)(1)-(a)(3) may be admitted:
(1) To cancel claims, where such cancellation does not affect the
scope of any other pending claim in the proceeding, or
(2) To rewrite dependent claims into independent form.
(b) All other amendments submitted after the date the proceeding
has been appealed pursuant to Sec. 41.31(a)(1)-(a)(3) will not be
admitted except as permitted by Secs. 41.39(b)(1), 41.50(a)(2)(i)
and 41.50(b)(1).
(c) Affidavits or other evidence submitted after the date the
proceeding has been appealed pursuant to Sec. 41.31(a)(1)-(a)(3) will
not be admitted except as permitted by Secs. 41.39(b)(1),
41.50(a)(2)(i) and 41.50(b)(1).
Sec. 41.35 Jurisdiction over appeal.
(a) Jurisdiction over the proceeding passes to the Board upon
transmittal of the file, including all briefs and examiner's answers,
to the Board.
(b) If, after receipt and review of the proceeding, the Board
determines that the file is not complete or is not in compliance with
the requirements of this subpart, the Board may relinquish jurisdiction
to the examiner or take other appropriate action to permit completion
of the proceeding.
(c) Prior to the entry of a decision on the appeal by the Board,
the Director may sua sponte order the proceeding remanded to the
examiner.
Sec. 41.37 Appeal brief.
(a)(1) Appellant must file a brief under this section within two
months from the date of the notice of appeal under Sec. 41.31.
(2) The brief must be accompanied by the fee set forth in Sec.
41.20(b)(2).
(b) On failure to file the brief, accompanied by the requisite fee,
within the period specified in paragraph (a) of this section, the
appeal will stand dismissed.
(c)(1) The brief shall contain the following items under
appropriate headings and in the order indicated in paragraphs (c)(1)(i)
through (c)(1)(x) of this section, except that a brief filed by an
appellant who is not represented by a registered practitioner need only
substantially comply with paragraphs (c)(1)(i) through (c)(1)(iv) and
(c)(1)(vii) through (c)(1)(x) of this section:
(i) Real party in interest. A statement identifying by name the
real party in interest.
(ii) Related appeals and interferences. A statement identifying by
application, patent, appeal or interference number all other prior and
pending appeals, interferences or judicial proceedings known to
appellant, the appellant's legal representative, or assignee which may
be related to, directly affect or be directly affected by or have a
bearing on the Board's decision in the pending appeal. Copies of any
decisions rendered by a court or the Board in any proceeding identified
under this paragraph must be included in an appendix as required by
paragraph (c)(1)(x) of this section.
(iii) Status of claims. A statement of the status of all the claims
in the proceeding (e.g., rejected, allowed or confirmed, withdrawn,
objected to, canceled) and an identification of those claims that are
being appealed.
(iv) Status of amendments. A statement of the status of any
amendment filed subsequent to final rejection.
(v) Summary of claimed subject matter. A concise explanation of the
subject matter defined in each of the independent claims involved in
the appeal, which shall refer to the specification by page and line
number, and to the drawing, if any, by reference characters. For each
claim involved in the appeal, every means plus function and step plus
function as permitted by 35 U.S.C. 112, sixth paragraph, must be
identified and the structure, material, or acts described in the
specification as corresponding to each claimed function must be set
forth with reference to the specification by page and line number, and
to the drawing, if any, by reference characters.
(vi) Grounds of rejection to be reviewed on appeal. A concise
statement of each ground of rejection presented for review.
(vii) Argument. The contentions of appellant with respect to each
ground of rejection presented for review in paragraph (c)(1)(vi) of
this section, and the basis therefor, with citations of the statutes,
regulations, authorities, and parts of the record relied on. Any
arguments or authorities not included in the brief or a reply brief
filed pursuant to Sec. 41.41 will be refused consideration by the
Board, unless good cause is shown. Each ground of rejection must be
treated under a separate heading. For each ground of rejection applying
to two or more claims, the claims may be argued separately or as a
group. When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim
from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on
the basis of the selected claim alone. Notwithstanding any other
provision of this paragraph, the failure of appellant to separately
argue claims which appellant has grouped together shall constitute a
waiver of any argument that the Board must consider the patentability
of any grouped claim separately. Any claim argued separately should be
placed under a subheading identifying the claim by number. Claims
argued as a group should be placed
under a subheading identifying the claims by number. A statement which
merely points out what a claim recites will not be considered an
argument for patentability of the claim.
(viii) Claims appendix. An appendix containing a copy of the claims
involved in the appeal.
(ix) Evidence appendix. An appendix containing copies of any
evidence submitted pursuant to Secs. 1.130, 1.131, 1.132 of this
title or of any other evidence entered by the examiner and relied upon
by appellant in the appeal, along with a statement setting forth where
in the record that evidence was entered in the record by the examiner.
Reference to unentered evidence is not permitted in the brief. See
Sec. 41.33 for treatment of evidence submitted after appeal. This
appendix may also include copies of the evidence relied upon by the
examiner as to grounds of rejection to be reviewed on appeal.
(x) Related proceedings appendix. An appendix containing copies of
decisions rendered by a court or the Board in any proceeding identified
pursuant to paragraph (c)(1)(ii) of this section.
(2) A brief shall not include any new or non-admitted amendment, or
any new or non-admitted affidavit or other evidence. See Sec. 1.116 of
this title for amendments, affidavits or other evidence filed after
final action but before or with any appeal and Sec. 41.33 for
amendments, affidavits or other evidence filed after the date of the
appeal.
(d) If a brief is filed which does not comply with all the
requirements of paragraph (c) of this section, appellant will be
notified of the reasons for non-compliance and given a time period
within which to file an amended brief. If appellant does not file an
amended brief within the set time period, or files an amended brief
which does not overcome all the reasons for non-compliance stated in
the notification, the appeal will stand dismissed.
(e) The time periods set forth in this section are extendable under
the provisions of Sec. 1.136 of this title for patent applications and
Sec. 1.550(c) of this title for ex parte reexamination proceedings.
Sec. 41.39 Examiner's answer.
(a)(1) The primary examiner may, within such time as may be
directed by the Director, furnish a written answer to the appeal brief
including such explanation of the invention claimed and of the
references relied upon and grounds of rejection as may be necessary,
supplying a copy to appellant. If the primary examiner determines that
the appeal does not comply with the provisions of Secs. 41.31-
41.37 or does not relate to an appealable action, the primary examiner
shall make such determination of record.
(2) An examiner's answer may include a new ground of rejection.
(b) If an examiner's answer contains a new ground of rejection,
appellant must within two months from the date of the examiner's answer
exercise one of the following two options to avoid sua sponte dismissal
of the appeal as to the claims subject to the new ground of rejection:
(1) Reopen prosecution. Request that prosecution be reopened before
the primary examiner by filing a reply under Sec. 1.111 of this title
with or without amendment or submission of affidavits (Sec. Sec.
1.130, 1.131 or 1.132 of this title) or other evidence. Any amendment
or submission of affidavits or other evidence must be relevant to the
new ground of rejection. A request that complies with this paragraph
will be entered and the application or the patent under ex parte
reexamination will be reconsidered by the examiner under the provisions
of Sec. 1.112 of this title. Any request that prosecution be reopened
under this paragraph will be treated as a request to withdraw the
appeal.
(2) Maintain appeal. Request that the appeal be maintained by
filing a reply brief as set forth in Sec. 41.41. Such a reply brief
must address each new ground of rejection as set forth in Sec.
41.37(c)(1)(vii) and should follow the other requirements of a brief as
set forth in Sec. 41.37(c). A reply brief may not be accompanied by
any amendment, affidavit (Secs. 1.130, 1.131 or 1.132 of this
title) or other evidence. If a reply brief filed pursuant to this
section is accompanied by any amendment, affidavit or other evidence,
it shall be treated as a request that prosecution be reopened before
the primary examiner under paragraph (b)(1) of this section.
(c) Extensions of time under Sec. 1.136(a) of this title for
patent applications are not applicable to the time period set forth in
this section. See Sec. 1.136(b) of this title for extensions of time
to reply for patent applications and Sec. 1.550(c) of this title for
extensions of time to reply for ex parte reexamination proceedings.
Sec. 41.41 Reply brief.
(a)(1) Appellant may file a reply brief to an examiner's answer
within two months from the date of the examiner's answer.
(2) A reply brief shall not include any new or non-admitted
amendment, or any new or non-admitted affidavit or other evidence. See
Sec. 1.116 of this title for amendments, affidavits or other evidence
filed after final action but before or with any appeal and Sec. 41.33
for amendments, affidavits or other evidence filed after the date of
the appeal.
(b) A reply brief that is not in compliance with paragraph (a) of
this section will not be considered. Appellant will be notified if a
reply brief is not in compliance with paragraph (a) of this section.
(c) Extensions of time under Sec. 1.136(a) of this title for
patent applications are not applicable to the time period set forth in
this section. See Sec. 1.136(b) of this title for extensions of time
to reply for patent applications and Sec. 1.550(c) of this title for
extensions of time to reply for ex parte reexamination proceedings.
Sec. 41.43 Examiner's response to reply brief.
(a)(1) After receipt of a reply brief in compliance with Sec.
41.41, the primary examiner must acknowledge receipt and entry of the
reply brief. In addition, the primary examiner may withdraw the final
rejection and reopen prosecution or may furnish a supplemental
examiner's answer responding to any new issue raised in the reply
brief.
(2) A supplemental examiner's answer may not include a new ground
of rejection.
(b) If a supplemental examiner's answer is furnished by the
examiner, appellant may file another reply brief under Sec. 41.41 to
any supplemental examiner's answer within two months from the date of
the supplemental examiner's answer.
(c) Extensions of time under Sec. 1.136(a) of this title for
patent applications are not applicable to the time period set forth in
this section. See Sec. 1.136(b) of this title for extensions of time
to reply for patent applications and Sec. 1.550(c) of this title for
extensions of time to reply for ex parte reexamination proceedings.
Sec. 41.47 Oral hearing.
(a) An oral hearing should be requested only in those circumstances
in which appellant considers such a hearing necessary or desirable for
a proper presentation of the appeal. An appeal decided on the briefs
without an oral hearing will receive the same consideration by the
Board as appeals decided after an oral hearing.
(b) If appellant desires an oral hearing, appellant must file, as a
separate paper captioned "REQUEST FOR ORAL HEARING," a written
request for such hearing accompanied by the fee set forth in Sec.
41.20(b)(3) within two months from the date of the examiner's answer or
supplemental examiner's answer.
(c) If no request and fee for oral hearing have been timely filed
by appellant as required by paragraph (b) of this section, the appeal
will be assigned for consideration and decision on the briefs without
an oral hearing.
(d) If appellant has complied with all the requirements of
paragraph (b) of this section, a date for the oral hearing will be set,
and due notice thereof given to appellant. If an oral hearing is held,
an oral argument may be presented by, or on behalf of, the primary
examiner if considered desirable by either the primary examiner or the
Board. A hearing will be held as stated in the notice, and oral
argument will ordinarily be limited to twenty minutes for appellant and
fifteen minutes for the primary examiner unless otherwise ordered.
(e) Appellant will argue first and may reserve time for rebuttal.
At the oral hearing, appellant may only rely on evidence that has been
previously entered and considered by the primary examiner and present
argument that has been relied upon in the brief or reply brief. The
primary examiner may only rely on argument and evidence relied upon in
an answer or a supplemental answer.
(f) Notwithstanding the submission of a request for oral hearing
complying with this rule, if the Board decides that a hearing is not
necessary, the Board will so notify appellant.
(g) Extensions of time under Sec. 1.136(a) of this title for
patent applications are not applicable to the time periods set forth in
this section. See Sec. 1.136(b) of this title for extensions of time
to reply for patent applications and Sec. 1.550(c) of this title for
extensions of time to reply for ex parte reexamination proceedings.
Sec. 41.50 Decisions and other actions by the Board.
(a)(1) The Board, in its decision, may affirm or reverse the
decision of the examiner in whole or in part on the grounds and on the
claims specified by the examiner. The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance
of the decision of the examiner on that claim, except as to any ground
specifically reversed. The Board may also remand an application to the
examiner.
(2) If a supplemental examiner's answer is written in response to a
remand by the Board for further consideration of a rejection pursuant
to paragraph (a)(1) of this section, the appellant must exercise one of
the following two options to avoid sua sponte dismissal of the appeal
as to all claims under appeal:
(i) Reopen prosecution. Request that prosecution be reopened before
the examiner by filing a reply under Sec. 1.111 of this title with or
without amendment or submission of affidavits (Secs. 1.130, 1.131
or 1.132 of this title) or other evidence. Any amendment or submission
of affidavits or other evidence must be relevant to the issues set
forth in the remand or raised in the supplemental examiner's answer. A
request that complies with this paragraph will be entered and the
application or the patent under ex parte reexamination will be
reconsidered by the examiner under the provisions of Sec. 1.112 of
this title. Any request that prosecution be reopened under this
paragraph will be treated as a request to withdraw the appeal.
(ii) Maintain appeal. Request that the appeal be maintained by
filing a reply brief as provided in Sec. 41.41. If such a reply brief
is accompanied by any amendment, affidavit or other evidence, it shall
be treated as a request that prosecution be reopened before the
examiner under paragraph (a)(2)(i) of this section.
(b) Should the Board have knowledge of any grounds not involved in
the appeal for rejecting any pending claim, it may include in its
opinion a statement to that effect with its reasons for so holding,
which statement constitutes a new ground of rejection of the claim. A
new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review. When the Board makes a new ground
of rejection, the appellant, within two months from the date of the
decision, must exercise one of the following two options with respect
to the new ground of rejection to avoid termination of the appeal
(Sec. 41.56) as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an amendment or
showing of facts not previously of record is made which, in the opinion
of the examiner, overcomes the new ground of rejection stated in the
decision. Should the examiner reject the claims, appellant may again
appeal to the Board pursuant to Secs. 41.31 through 41.56.
(2) Request rehearing. Request that the proceeding be reheard under
Sec. 41.52 by the Board upon the same record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
(c) The opinion of the Board may include an explicit statement how
a claim on appeal may be amended to overcome a specific rejection. When
the opinion of the Board includes such a statement, appellant has the
right to amend in conformity therewith. An amendment in conformity with
such statement will overcome the specific rejection. An examiner may
reject a claim so-amended, provided that the rejection constitutes a
new ground of rejection.
(d) The Board may order appellant to additionally brief any matter
that the Board considers to be of assistance in reaching a reasoned
decision on the pending appeal. Appellant will be given a non-
extendable time period within which to respond to such an order.
Failure to timely comply with the order may result in the sua sponte
dismissal of the appeal.
(e) Whenever a decision of the Board includes a remand, that
decision shall not be considered final for judicial review. When
appropriate, upon conclusion of proceedings on remand before the
examiner, the Board may enter an order otherwise making its decision
final for judicial review.
(f) Extensions of time under Sec. 1.136(a) of this title for
patent applications are not applicable to the time periods set forth in
this section. See Sec. 1.136(b) of this title for extensions of time
to reply for patent applications and Sec. 1.550(c) of this title for
extensions of time to reply for ex parte reexamination proceedings.
Sec. 41.52 Rehearing.
(a) Appellant may file a single request for rehearing within 2
months of the date of the original decision of the Board. No request
for rehearing from a decision on rehearing will be permitted, unless
the rehearing decision so modified the original decision as to become,
in effect, a new decision, and the Board states that a second request
for rehearing would be permitted. The request for rehearing must state
with particularity the points believed to have been misapprehended or
overlooked by the Board. Except for arguments responding to a new
ground of rejection made pursuant to Sec. 41.50(b), arguments not
raised in the briefs before the Board and evidence not previously
relied upon in the brief and any reply brief(s) are not permitted in
the request for rehearing. When a request for rehearing is made, the
Board shall render a decision on the request for rehearing. The
decision on the request for rehearing is deemed to
incorporate the earlier opinion reflecting its decision for appeal,
except for those portions specifically withdrawn on rehearing, and is
final for the purpose of judicial review, except when noted otherwise
in the decision on rehearing.
(b) Extensions of time under Sec. 1.136(a) of this title for
patent applications are not applicable to the time period set forth in
this section. See Sec. 1.136(b) of this title for extensions of time
to reply for patent applications and Sec. 1.550(c) of this title for
extensions of time to reply for ex parte reexamination proceedings.
Sec. 41.54 Action following decision.
After decision by the Board, the proceeding will be returned to the
examiner, subject to appellant's right of appeal or other review, for
such further action by appellant or by the examiner, as the condition
of the proceeding may require, to carry into effect the decision.
Sec. 41.56 Termination of appeal.
An appeal under this subpart is terminated by the dismissal of the
appeal or when, after a final Board action:
(a) A notice of appeal under 35 U.S.C. 141 is filed,
(b) A civil action under 35 U.S.C. 146 is commenced, or
(c) The time for seeking judicial review (Sec. 1.304 of this
title) has expired.
Subpart C - Inter Partes Appeals to the Board
Sec. 41.60 Definitions.
In addition to the definitions in Sec. 41.2, the following
definitions apply to proceedings under this subpart unless otherwise
clear from the context:
Proceeding means an inter partes reexamination proceeding. Appeal
to the Board in an ex parte reexamination proceeding is controlled by
subpart B of this part. An inter partes reexamination proceeding is not
a contested case subject to subpart D of this part.
Owner means the owner of the patent undergoing inter partes
reexamination under Sec. 1.915 of this title.
Requester means each party, other than the owner, who requested
that the patent undergo inter partes reexamination under Sec. 1.915 of
this title.
Appellant means any party, whether the owner or a requester, filing
a notice of appeal or cross appeal under Sec. 41.61. If more than one
party appeals or cross appeals, each appealing or cross appealing party
is an appellant with respect to the claims to which his or her appeal
or cross appeal is directed.
Respondent means any requester responding under Sec. 41.68 to the
appellant's brief of the owner, or the owner responding under Sec.
41.68 to the appellant's brief of any requester. No requester may be a
respondent to the appellant brief of any other requester.
Filing means filing with a certificate indicating service of the
document under Sec. 1.903 of this title.
Sec. 41.61 Notice of appeal and cross appeal to Board.
(a)(1) Upon the issuance of a Right of Appeal Notice under Sec.
1.953 of this title, the owner may appeal to the Board with respect to
the final rejection of any claim of the patent by filing a notice of
appeal within the time provided in the Right of Appeal Notice and
paying the fee set forth in Sec. 41.20(b)(1).
(2) Upon the issuance of a Right of Appeal Notice under Sec. 1.953
of this title, the requester may appeal to the Board with respect to
any final decision favorable to the patentability, including any final
determination not to make a proposed rejection, of any original,
proposed amended, or new claim of the patent by filing a notice of
appeal within the time provided in the Right of Appeal Notice and
paying the fee set forth in Sec. 41.20(b)(1).
(b)(1) Within fourteen days of service of a requester's notice of
appeal under paragraph (a)(2) of this section and upon payment of the
fee set forth in Sec. 41.20(b)(1), an owner who has not filed a notice
of appeal may file a notice of cross appeal with respect to the final
rejection of any claim of the patent.
(2) Within fourteen days of service of an owner's notice of appeal
under paragraph (a)(1) of this section and upon payment of the fee set
forth in Sec. 41.20(b)(1), a requester who has not filed a notice of
appeal may file a notice of cross appeal with respect to any final
decision favorable to the patentability, including any final
determination not to make a proposed rejection, of any original,
proposed amended, or new claim of the patent.
(c) The notice of appeal or cross appeal in the proceeding must
identify the appealed claim(s) and must be signed by the owner, the
requester, or a duly authorized attorney or agent.
(d) An appeal or cross appeal, when taken, must be taken from all
the rejections of the claims in a Right of Appeal Notice which the
patent owner proposes to contest or from all the determinations
favorable to patentability, including any final determination not to
make a proposed rejection, in a Right of Appeal Notice which a
requester proposes to contest. Questions relating to matters not
affecting the merits of the invention may be required to be settled
before an appeal is decided.
(e) The time periods for filing a notice of appeal or cross appeal
may not be extended.
(f) If a notice of appeal or cross appeal is timely filed but does
not comply with any requirement of this section, appellant will be
notified of the reasons for non-compliance and given a non-extendable
time period within which to file an amended notice of appeal or cross
appeal. If the appellant does not then file an amended notice of appeal
or cross appeal within the set time period, or files a notice which
does not overcome all the reasons for non-compliance stated in the
notification of the reasons for non-compliance, that appellant's appeal
or cross appeal will stand dismissed.
Sec. 41.63 Amendments and affidavits or other evidence after appeal.
(a) Amendments submitted after the date the proceeding has been
appealed pursuant to Sec. 41.61 canceling claims may be admitted where
such cancellation does not affect the scope of any other pending claim
in the proceeding.
(b) All other amendments submitted after the date the proceeding
has been appealed pursuant to Sec. 41.61 will not be admitted except
as permitted by Sec. 41.77(b)(1).
(c) Affidavits or other evidence submitted after the date the
proceeding has been appealed pursuant to Sec. 41.61 will not be
admitted except as permitted by reopening prosecution under Sec.
41.77(b)(1).
Sec. 41.64 Jurisdiction over appeal in inter partes reexamination.
(a) Jurisdiction over the proceeding passes to the Board upon
transmittal of the file, including all briefs and examiner's answers,
to the Board.
(b) If, after receipt and review of the proceeding, the Board
determines that the file is not complete or is not in compliance with
the requirements of this subpart, the Board may relinquish jurisdiction
to the examiner or take other appropriate action to permit completion
of the proceeding.
(c) Prior to the entry of a decision on the appeal by the Board,
the Director may sua sponte order the proceeding remanded to the
examiner.
Sec. 41.66 Time for filing briefs.
(a) An appellant's brief must be filed no later than two months
from the latest filing date of the last-filed notice of appeal or cross
appeal or, if any party to the proceeding is entitled to file an appeal
or cross appeal but fails to timely
do so, the expiration of time for filing (by the last party entitled to
do so) such notice of appeal or cross appeal. The time for filing an
appellant's brief or an amended appellant's brief may not be extended.
(b) Once an appellant's brief has been properly filed, any brief
must be filed by respondent within one month from the date of service
of the appellant's brief. The time for filing a respondent's brief or
an amended respondent's brief may not be extended.
(c) The examiner will consider both the appellant's and
respondent's briefs and may prepare an examiner's answer under Sec.
41.69.
(d) Any appellant may file a rebuttal brief under Sec. 41.71
within one month of the date of the examiner's answer. The time for
filing a rebuttal brief or an amended rebuttal brief may not be
extended.
(e) No further submission will be considered and any such
submission will be treated in accordance with Sec. 1.939 of this
title.
Sec. 41.67 Appellant's brief.
(a)(1) Appellant(s) may once, within time limits for filing set
forth in Sec. 41.66, file a brief and serve the brief on all other
parties to the proceeding in accordance with Sec. 1.903 of this title.
(2) The brief must be signed by the appellant, or the appellant's
duly authorized attorney or agent and must be accompanied by the
requisite fee set forth in Sec. 41.20(b)(2).
(b) A party's appeal shall stand dismissed upon failure of that
party to file an appellant's brief, accompanied by the requisite fee,
within the time allowed under Sec. 41.66(a).
(c)(1) The appellant's brief shall contain the following items
under appropriate headings and in the order indicated in paragraphs
(c)(1)(i) through (c)(1)(xi) of this section.
(i) Real party in interest. A statement identifying by name the
real party in interest.
(ii) Related appeals and interferences. A statement identifying by
application, patent, appeal or interference number all other prior and
pending appeals, interferences or judicial proceedings known to
appellant, the appellant's legal representative, or assignee which may
be related to, directly affect or be directly affected by or have a
bearing on the Board's decision in the pending appeal. Copies of any
decisions rendered by a court or the Board in any proceeding identified
under this paragraph must be included in an appendix as required by
paragraph (c)(1)(xi) of this section.
(iii) Status of claims. A statement of the status of all the claims
in the proceeding (e.g., rejected, allowed or confirmed, withdrawn,
objected to, canceled). If the appellant is the owner, the appellant
must also identify the rejected claims whose rejection is being
appealed. If the appellant is a requester, the appellant must identify
the claims that the examiner has made a determination favorable to
patentability, which determination is being appealed.
(iv) Status of amendments. A statement of the status of any
amendment filed subsequent to the close of prosecution.
(v) Summary of claimed subject matter. A concise explanation of the
subject matter defined in each of the independent claims involved in
the appeal, which shall refer to the specification by column and line
number, and to the drawing(s), if any, by reference characters. For
each claim involved in the appeal, every means plus function and step
plus function as permitted by 35 U.S.C. 112, sixth paragraph, must be
identified and the structure, material, or acts described in the
specification as corresponding to each claimed function must be set
forth with reference to the specification by page and line number, and
to the drawing, if any, by reference characters.
(vi) Issues to be reviewed on appeal. A concise statement of each
issue presented for review. No new ground of rejection can be proposed
by a third party requester appellant, unless such ground was withdrawn
by the examiner during the prosecution of the proceeding, and the third
party requester has not yet had an opportunity to propose it as a third
party requester proposed ground of rejection.
(vii) Argument. The contentions of appellant with respect to each
issue presented for review in paragraph (c)(1)(vi) of this section, and
the basis therefor, with citations of the statutes, regulations,
authorities, and parts of the record relied on. Any arguments or
authorities not included in the brief permitted under this section or
Secs. 41.68 and 41.71 will be refused consideration by the Board,
unless good cause is shown. Each issue must be treated under a separate
heading. If the appellant is the patent owner, for each ground of
rejection in the Right of Appeal Notice which appellant contests and
which applies to two or more claims, the claims may be argued
separately or as a group. When multiple claims subject to the same
ground of rejection are argued as a group by appellant, the Board may
select a single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.
Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped
together shall constitute a waiver of any argument that the Board must
consider the patentability of any grouped claim separately. Any claim
argued separately should be placed under a subheading identifying the
claim by number. Claims argued as a group should be placed under a
subheading identifying the claims by number. A statement which merely
points out what a claim recites will not be considered an argument for
patentability of the claim.
(viii) Claims appendix. An appendix containing a copy of the claims
to be reviewed on appeal.
(ix) Evidence appendix. An appendix containing copies of any
evidence submitted pursuant to Secs. 1.130, 1.131, 1.132 of this
title or of any other evidence entered by the examiner and relied upon
by appellant in the appeal, along with a statement setting forth where
in the record that evidence was entered in the record by the examiner.
Reference to unentered evidence is not permitted in the brief. See
Sec. 41.63 for treatment of evidence submitted after appeal. This
appendix may also include copies of the evidence relied upon by the
examiner in any ground of rejection to be reviewed on appeal.
(x) Related proceedings appendix. An appendix containing copies of
decisions rendered by a court or the Board in any proceeding identified
pursuant to paragraph (c)(1)(ii) of this section.
(xi) Certificate of service. A certification that a copy of the
brief has been served in its entirety on all other parties to the
reexamination proceeding. The names and addresses of the parties served
must be indicated.
(2) A brief shall not include any new or non-admitted amendment, or
any new or non-admitted affidavit or other evidence. See Sec. 1.116 of
this title for amendments, affidavits or other evidence filed after
final action but before or with any appeal and Sec. 41.63 for
amendments, affidavits or other evidence after the date of the appeal.
(d) If a brief is filed which does not comply with all the
requirements of paragraph (a) and paragraph (c) of this section,
appellant will be notified of the reasons for non-compliance and given
a non-extendable time period within which to file an amended brief. If
appellant does not file an amended brief within the set time period, or
files an amended brief which does not overcome all the reasons for non-
compliance stated in the notification, that appellant's appeal will stand
dismissed.
Sec. 41.68 Respondent's brief.
(a)(1) Respondent(s) in an appeal may once, within the time limit
for filing set forth in Sec. 41.66, file a respondent brief and serve
the brief on all parties in accordance with Sec. 1.903 of this title.
(2) The brief must be signed by the party, or the party's duly
authorized attorney or agent, and must be accompanied by the requisite
fee set forth in Sec. 41.20(b)(2).
(3) The respondent brief shall be limited to issues raised in the
appellant brief to which the respondent brief is directed.
(4) A requester's respondent brief may not address any brief of any
requester.
(b)(1) The respondent brief shall contain the following items under
appropriate headings and in the order here indicated, and may include
an appendix containing only those portions of the record on which
reliance has been made.
(i) Real Party in Interest. A statement identifying by name the
real party in interest.
(ii) Related Appeals and Interferences. A statement identifying by
application, patent, appeal or interference number all other prior and
pending appeals, interferences or judicial proceedings known to
respondent, the respondent's legal representative, or assignee which
may be related to, directly affect or be directly affected by or have a
bearing on the Board's decision in the pending appeal. Copies of any
decisions rendered by a court or the Board in any proceeding identified
under this paragraph must be included in an appendix as required by
paragraph (b)(1)(ix) of this section.
(iii) Status of claims. A statement accepting or disputing
appellant's statement of the status of claims. If appellant's statement
of the status of claims is disputed, the errors in appellant's
statement must be specified with particularity.
(iv) Status of amendments. A statement accepting or disputing
appellant's statement of the status of amendments. If appellant's
statement of the status of amendments is disputed, the errors in
appellant's statement must be specified with particularity.
(v) Summary of claimed subject matter. A statement accepting or
disputing appellant's summary of the subject matter defined in each of
the independent claims involved in the appeal. If appellant's summary
of the subject matter is disputed, the errors in appellant's summary
must be specified.
(vi) Issues to be reviewed on appeal. A statement accepting or
disputing appellant's statement of the issues presented for review. If
appellant's statement of the issues presented for review is disputed,
the errors in appellant's statement must be specified. A counter
statement of the issues for review may be made. No new ground of
rejection can be proposed by a requester respondent.
(vii) Argument. A statement accepting or disputing the contentions
of appellant with each of the issues presented by the appellant for
review. If a contention of the appellant is disputed, the errors in
appellant's argument must be specified, stating the basis therefor,
with citations of the statutes, regulations, authorities, and parts of
the record relied on. Each issue must be treated under a separate
heading. An argument may be made with each of the issues stated in the
counter statement of the issues, with each counter-stated issue being
treated under a separate heading.
(viii) Evidence appendix. An appendix containing copies of any
evidence submitted pursuant to Secs. 1.130, 1.131, 1.132 of this
title or of any other evidence entered by the examiner and relied upon
by respondent in the appeal, along with a statement setting forth where
in the record that evidence was entered in the record by the examiner.
Reference to unentered evidence is not permitted in the respondent's
brief. See Sec. 41.63 for treatment of evidence submitted after
appeal.
(ix) Related proceedings appendix. An appendix containing copies of
decisions rendered by a court or the Board in any proceeding identified
pursuant to paragraph (b)(1)(ii) of this section.
(x) Certificate of service. A certification that a copy of the
respondent brief has been served in its entirety on all other parties
to the reexamination proceeding. The names and addresses of the parties
served must be indicated.
(2) A respondent brief shall not include any new or non-admitted
amendment, or any new or non-admitted affidavit or other evidence. See
Sec. 1.116 of this title for amendments, affidavits or other evidence
filed after final action but before or with any appeal and Sec. 41.63
for amendments, affidavits or other evidence filed after the date of
the appeal.
(c) If a respondent brief is filed which does not comply with all
the requirements of paragraph (a) and paragraph (b) of this section,
respondent will be notified of the reasons for non-compliance and given
a non-extendable time period within which to file an amended brief. If
respondent does not file an amended respondent brief within the set
time period, or files an amended respondent brief which does not
overcome all the reasons for non-compliance stated in the notification,
the respondent brief and any amended respondent brief by that
respondent will not be considered.
Sec. 41.69 Examiner's answer.
(a) The primary examiner may, within such time as directed by the
Director, furnish a written answer to the owner's and/or requester's
appellant brief or respondent brief including, as may be necessary,
such explanation of the invention claimed and of the references relied
upon, the grounds of rejection, and the reasons for patentability,
including grounds for not adopting any proposed rejection. A copy of
the answer shall be supplied to the owner and all requesters. If the
primary examiner determines that the appeal does not comply with the
provisions of Secs. 41.61-41.68 or does not relate to an
appealable action, the primary examiner shall make such determination
of record.
(b) An examiner's answer may not include a new ground of rejection.
(c) An examiner's answer may not include a new determination not to
make a proposed rejection of a claim.
(d) Any new ground of rejection, or any new determination not to
make a proposed rejection, must be made in an Office action reopening
prosecution.
Sec. 41.71 Rebuttal brief.
(a) Within one month of the examiner's answer, any appellant may
once file a rebuttal brief.
(b)(1) The rebuttal brief of the owner may be directed to the
examiner's answer and/or any respondent brief.
(2) The rebuttal brief of the owner shall not include any new or
non-admitted amendment, or an affidavit or other evidence. See Sec.
1.116 of this title for amendments, affidavits or other evidence filed
after final action but before or with any appeal and Sec. 41.63 for
amendments, affidavits or other evidence filed after the date of the
appeal.
(c)(1) The rebuttal brief of any requester may be directed to the
examiner's answer and/or the respondent brief of the owner.
(2) The rebuttal brief of a requester may not be directed to the
respondent brief of any other requester.
(3) No new ground of rejection can be proposed by a requester.
(4) The rebuttal brief of a requester shall not include any new or
non-admitted affidavit or other evidence. See Sec. 1.116(d) of this title
for affidavits or other evidence filed after final action but before or
with any appeal and Sec. 41.63(c) for affidavits or other evidence
filed after the date of the appeal.
(d) The rebuttal brief must include a certification that a copy of
the rebuttal brief has been served in its entirety on all other parties
to the proceeding. The names and addresses of the parties served must
be indicated.
(e) If a rebuttal brief is timely filed under paragraph (a) of this
section but does not comply with all the requirements of paragraphs
(a)-(d) of this section, appellant will be notified of the reasons for
non-compliance and provided with a non-extendable period of one month
within which to file an amended rebuttal brief. If the appellant does
not file an amended rebuttal brief during the one-month period, or
files an amended rebuttal brief which does not overcome all the reasons
for non-compliance stated in the notification, that appellant's
rebuttal brief and any amended rebuttal brief by that appellant will
not be considered.
Sec. 41.73 Oral hearing.
(a) An oral hearing should be requested only in those circumstances
in which an appellant or a respondent considers such a hearing
necessary or desirable for a proper presentation of the appeal. An
appeal decided on the briefs without an oral hearing will receive the
same consideration by the Board as an appeal decided after an oral
hearing.
(b) If an appellant or a respondent desires an oral hearing, he or
she must file, as a separate paper captioned "REQUEST FOR ORAL
HEARING," a written request for such hearing accompanied by the fee
set forth in Sec. 41.20(b)(3) within two months after the date of the
examiner's answer. The time for requesting an oral hearing may not be
extended. The request must include a certification that a copy of the
request has been served in its entirety on all other parties to the
proceeding. The names and addresses of the parties served must be
indicated.
(c) If no request and fee for oral hearing have been timely filed
by appellant or respondent as required by paragraph (b) of this
section, the appeal will be assigned for consideration and decision on
the briefs without an oral hearing.
(d) If appellant or respondent has complied with all the
requirements of paragraph (b) of this section, a hearing date will be
set, and notice given to the owner and all requesters. If an oral
hearing is held, an oral argument may be presented by, or on behalf of,
the primary examiner if considered desirable by either the primary
examiner or the Board. The notice shall set a non-extendable period
within which all requests for oral hearing shall be submitted by any
other party to the appeal desiring to participate in the oral hearing.
A hearing will be held as stated in the notice, and oral argument will
be limited to thirty minutes for each appellant and respondent who has
requested an oral hearing, and twenty minutes for the primary examiner
unless otherwise ordered. No appellant or respondent will be permitted
to participate in an oral hearing unless he or she has requested an
oral hearing and submitted the fee set forth in Sec. 41.20(b)(3).
(e) At the oral hearing, each appellant and respondent may only
rely on evidence that has been previously entered and considered by the
primary examiner and present argument that has been relied upon in the
briefs. The primary examiner may only rely on argument and evidence
relied upon in an answer. The Board will determine the order of the
arguments presented at the oral hearing.
(f) Notwithstanding the submission of a request for oral hearing
complying with this rule, if the Board decides that a hearing is not
necessary, the Board will so notify the owner and all requesters.
Sec. 41.77 Decisions and other actions by the Board.
(a) The Board of Patent Appeals and Interferences, in its decision,
may affirm or reverse each decision of the examiner on all issues
raised on each appealed claim, or remand the reexamination proceeding
to the examiner for further consideration. The reversal of the
examiner's determination not to make a rejection proposed by the third
party requester constitutes a decision adverse to the patentability of
the claims which are subject to that proposed rejection which will be
set forth in the decision of the Board of Patent Appeals and
Interferences as a new ground of rejection under paragraph (b) of this
section. The affirmance of the rejection of a claim on any of the
grounds specified constitutes a general affirmance of the decision of
the examiner on that claim, except as to any ground specifically
reversed.
(b) Should the Board reverse the examiner's determination not to
make a rejection proposed by a requester, the Board shall set forth in
the opinion in support of its decision a new ground of rejection; or
should the Board have knowledge of any grounds not raised in the appeal
for rejecting any pending claim, it may include in its opinion a
statement to that effect with its reasons for so holding, which
statement shall constitute a new ground of rejection of the claim. Any
decision which includes a new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review. When the
Board makes a new ground of rejection, the owner, within one month from
the date of the decision, must exercise one of the following two
options with respect to the new ground of rejection to avoid
termination of the appeal proceeding as to the rejected claim:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected, a showing of facts or
new evidence relating to the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under Sec. 41.79 by the Board upon the same record. The
request for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of rejection
and also state all other grounds upon which rehearing is sought.
(c) Where the owner has filed a response requesting reopening of
prosecution under paragraph (b)(1) of this section, any requester,
within one month of the date of service of the owner's response, may
once file comments on the response. Such written comments must be
limited to the issues raised by the Board's opinion reflecting its
decision and the owner's response. Any requester that had not
previously filed an appeal or cross appeal and is seeking under this
subsection to file comments or a reply to the comments is subject to
the appeal and brief fees under Sec. 41.20(b)(1) and (2),
respectively, which must accompany the comments or reply.
(d) Following any response by the owner under paragraph (b)(1) of
this section and any written comments from a requester under paragraph
(c) of this section, the proceeding will be remanded to the examiner.
The statement of the Board shall be binding upon the examiner unless an
amendment or showing of facts not previously of record is made which,
in the opinion of the examiner, overcomes the new ground of rejection
stated in the decision. The examiner will consider any owner response
under paragraph (b)(1) of this section and any written
comments by a requester under paragraph (c) of this section and issue a
determination that the rejection is maintained or has been overcome.
(e) Within one month of the examiner's determination pursuant to
paragraph (d) of this section, the owner or any requester may once
submit comments in response to the examiner's determination. Within one
month of the date of service of comments in response to the examiner's
determination, the owner and any requesters may file a reply to the
comments. No requester reply may address the comments of any other
requester reply. Any requester that had not previously filed an appeal
or cross appeal and is seeking under this subsection to file comments
or a reply to the comments is subject to the appeal and brief fees
under Secs. 41.20(b)(1) and (2), respectively, which must
accompany the comments or reply.
(f) After submission of any comments and any reply pursuant to
paragraph (e) of this section, or after time has expired, the
proceeding will be returned to the Board which shall reconsider the
matter and issue a new decision. The new decision is deemed to
incorporate the earlier decision, except for those portions
specifically withdrawn.
(g) The time period set forth in paragraph (b) of this section is
subject to the extension of time provisions of Sec. 1.956 of this
title when the owner is responding under paragraph (b)(1) of this
section. The time period set forth in paragraph (b) of this section may
not be extended when the owner is responding under paragraph (b)(2) of
this section. The time periods set forth in paragraphs (c) and (e) of
this section may not be extended.
Sec. 41.79 Rehearing.
(a) Parties to the appeal may file a request for rehearing of the
decision within one month of the date of:
(1) The original decision of the Board under Sec. 41.77(a),
(2) the original Sec. 41.77(b) decision under the provisions of
Sec. 41.77(b)(2),
(3) the expiration of the time for the owner to take action under
Sec. 41.77(b)(2), or
(4) the new decision of the Board under Sec. 41.77(f).
(b) The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked in rendering
the Board's opinion reflecting its decision. Arguments not raised in
the briefs before the Board and evidence not previously relied upon in
the briefs are not permitted in the request for rehearing except for
arguments responding to a new ground of rejection made pursuant to
Sec. 41.77(b).
(c) Within one month of the date of service of any request for
rehearing under paragraph (a) of this section, or any further request
for rehearing under paragraph (d) of this section, the owner and all
requesters may once file comments in opposition to the request for
rehearing or the further request for rehearing. The comments in
opposition must be limited to the issues raised in the request for
rehearing or the further request for rehearing.
(d) If a party to an appeal files a request for rehearing under
paragraph (a) of this section, or a further request for rehearing under
this section, the Board shall render a decision on the request for
rehearing. The decision on the request for rehearing is deemed to
incorporate the earlier opinion reflecting its decision for appeal,
except for those portions specifically withdrawn on rehearing and is
final for the purpose of judicial review, except when noted otherwise
in the decision on rehearing. If the Board opinion reflecting its
decision on rehearing becomes, in effect, a new decision, and the Board
so indicates, then any party to the appeal may, within one month of the
new decision, file a further request for rehearing of the new decision
under this subsection. Such further request for rehearing must comply
with paragraph (b) of this section.
(e) The times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this
section may not be extended.
Sec. 41.81 Action following decision.
The parties to an appeal to the Board may not appeal to the U.S.
Court of Appeals for the Federal Circuit under Sec. 1.983 of this
title until all parties' rights to request rehearing have been
exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.
Sec. 41.83 Termination of appeal.
An appeal to the Board by a party under this subpart is terminated
by the dismissal of that party's appeal or when, after a final Board
action:
(a) A notice of appeal under 35 U.S.C. 141 is filed, or
(b) The time for seeking judicial review (Sec. 1.983 of this
title) has expired.
Subpart D - Contested Cases
Sec. 41.100 Definitions.
In addition to the definitions in Sec. 41.2, the following
definitions apply to proceedings under this subpart:
Business day means a day other than a Saturday, Sunday, or Federal
holiday within the District of Columbia.
Involved means the Board has declared the patent application,
patent, or claim so described to be a subject of the contested case.
Sec. 41.101 Notice of proceeding.
(a) Notice of a contested case will be sent to every party to the
proceeding. The entry of the notice initiates the proceeding.
(b) When the Board is unable to provide actual notice of a
contested case on a party through the correspondence address of record
for the party, the Board may authorize other modes of notice,
including:
(1) Sending notice to another address associated with the party, or
(2) Publishing the notice in the Official Gazette of the United
States Patent and Trademark Office.
Sec. 41.102 Completion of examination.
Except as the Board may otherwise authorize, before a contested
case is initiated:
(a) Examination of each involved application and any pending
reexamination of each involved patent must be completed, and
(b) Each involved application and patent must have at least one
claim that:
(1) Is patentable, and
(2) Would be involved in the contested case.
Sec. 41.103 Jurisdiction over involved files.
The Board has jurisdiction over any involved file from the time the
Board initiates a contested case until the termination of the contested
case. Other proceedings for the involved file within the Office are
suspended except as the Board may order.
Sec. 41.104 Conduct of contested case.
(a) The Board may determine a proper course of conduct in a
proceeding for any situation not specifically covered by this part and
may enter non-final orders to administer the proceeding.
(b) An administrative patent judge may waive or suspend in a
proceeding the application of any rule in this subpart, subject to such
conditions as the administrative patent judge may impose.
(c) Times set in this subpart are defaults. In the event of a
conflict between a time set by rule and a time set by order, the time
set by order is controlling. Action due on a day other than a business
day may be completed on the next business day unless the Board
expressly states otherwise.
Sec. 41.105 Ex parte communications.
An ex parte communication about a contested case with a Board
member or a Board employee conducting the proceeding is not permitted.
Sec. 41.106 Filing and service.
(a) General format requirements. (1) The paper used for filings
must be durable and white. A party must choose to file on either A4-
sized paper or 8 1/2 inch x 11 inch paper except in the case of
exhibits that require a larger size in order to preserve details of the
original. A party may not switch between paper sizes in a single
proceeding. Only one side of the paper may be used.
(2) In papers, including affidavits, created for the proceeding:
(i) The ink must be black or must otherwise provide an equivalently
permanent, dark, high-contrast image on the paper. The quality of the
printing must be equivalent to the quality produced by a laser printer.
Either a proportional or monospaced font may be used, but the
proportional font must be 12-point or larger and a monospaced font must
not contain more than 4 characters per centimeter (10 characters per
inch). Case names must be underlined or italicized.
(ii) Double spacing must be used except in headings, signature
blocks, and certificates of service. Block quotations may be single-
spaced and must be indented. Margins must be at least 2.5 centimeters
(1 inch) on all sides.
(b) Papers other than exhibits. - (1) Cover sheet. (i) The cover
sheet must include the caption the Board specifies for the proceeding,
a header indicating the party and contact information for the party,
and a title indicating the sequence and subject of the paper. For
example, "JONES MOTION 2, For benefit of an earlier application".
(ii) If the Board specifies a color other than white for the cover
sheet, the cover sheet must be that color.
(2) Papers must have two 0.5 cm (1/4 inch) holes with centers 1 cm
(1/2 inch) from the top of the page and 7 cm (2 3/4 inch) apart,
centered horizontally on the page.
(3) Incorporation by reference; combined papers. Arguments must not
be incorporated by reference from one paper into another paper.
Combined motions, oppositions, replies, or other combined papers are
not permitted.
(4) Citation of authority.
(i) Citations to authority must include:
(A) A United States Reports citation for any Supreme Court case.
(B) Parallel citation of cases to both the West Reporter System and
to the United States Patents Quarterly whenever a case is published in
both. Other parallel citations are discouraged.
(C) Pinpoint citations whenever a specific holding or portion of an
authority is invoked.
(ii) Non-binding authority should be used sparingly. If the
authority is not an authority of the Office and is not reproduced in
one of the reporters listed in paragraph (c)(4)(i) of this section, a
copy of the authority should be filed with the first paper in which it
is cited.
(5) Exhibits. Additional requirements for exhibits appear in Sec.
41.154(c).
(c) Working copy. Every paper filed must be accompanied by a
working copy marked "APJ Copy".
(d) Specific filing forms. - (1) Filing by mail. A paper filed by
mail must be addressed to Mail Stop INTERFERENCE, Board of Patent
Appeals and Interferences, United States Patent and Trademark Office,
PO Box 1450, Alexandria, Virginia 22313-1450. A paper filed using the
EXPRESS MAIL[reg] service of the United States Postal Service will be
deemed to be filed as of "date-in" on the EXPRESS MAIL[reg] mailing
label; otherwise, mail will be deemed to be filed as of the stamped
date of receipt at the Board.
(2) Other modes of filing. The Board may authorize other modes of
filing, including electronic filing, and may set conditions for the use
of such other modes.
(e) Service. (1) Papers filed with the Board, if not previously
served, must be served simultaneously on every opposing party except as
the Board expressly directs.
(2) If a party is represented by counsel, service must be on
counsel.
(3) Service must be by EXPRESS MAIL (an expedited-delivery
service of the United States Postal Service) or by means at least as
fast and reliable as EXPRESS MAIL. Electronic service is not
permitted without Board authorization.
(4) The date service is received does not count in computing the
time for responding.
(f) Certificate of service.
(1) Papers other than exhibits must include a certificate of
service as a separate page at the end of each paper that must be served
on an opposing party.
(2) Exhibits must be accompanied by a certificate of service, but a
single certificate may accompany any group of exhibits submitted
together.
(3) A certificate of service must state:
(i) The name of each paper served,
(ii) The date and manner of service, and
(iii) The name and address of every person served.
(4) A certificate made by a person other than a registered patent
practitioner must be in the form of an affidavit.
Sec. 41.107 [Reserved]
Sec. 41.108 Lead counsel.
(a) A party may be represented by counsel. The Board may require a
party to appoint a lead counsel. If counsel is not of record in a
party's involved application or patent, then a power of attorney for
that counsel for the party's involved application or patent must be
filed with the notice required in paragraph (b) of this section.
(b) Within 14 days of the initiation of each contested case, each
party must file a separate notice identifying its counsel, if any, and
providing contact information for each counsel identified or, if the
party has no counsel, then for the party. Contact information must, at
a minimum, include:
(1) A mailing address;
(2) An address for courier delivery when the mailing address is not
available for such delivery (for example, when the mailing address is a
Post Office box);
(3) A telephone number;
(4) A facsimile number; and
(5) An electronic mail address.
(c) A party must promptly notify the Board of any change in the
contact information required in paragraph (b).
Sec. 41.109 Access to and copies of Office records.
(a) Request for access or copies. Any request from a party for
access to or copies of Office records directly related to a contested
case must be filed with the Board. The request must precisely identify
the records and in the case of copies include the appropriate fee set
under Sec. 1.19(b) of this title.
(b) Authorization of access and copies. Access and copies will
ordinarily only be authorized for the following records:
(1) The application file for an involved patent;
(2) An involved application; and
(3) An application for which a party has been accorded benefit
under subpart E of this part.
(c) Missing or incomplete copies. If a party does not receive a
complete copy of a record within 21 days of the authorization, the
party must promptly notify the Board.
Sec. 41.110 Filing claim information.
(a) Clean copy of claims. Within 14 days of the initiation of the
proceeding, each party must file a clean copy of its involved claims
and, if a biotechnology material sequence is a limitation, a clean copy
of the sequence.
(b) Annotated copy of claims. Within 28 days of the initiation of
the proceeding, each party must:
(1) For each involved claim having a limitation that is illustrated
in a drawing or biotechnology material sequence, file an annotated copy
of the claim indicating in bold face between braces ({ }) where
each limitation is shown in the drawing or sequence.
(2) For each involved claim that contains a means-plus-function or
step-plus-function limitation in the form permitted under 35 U.S.C.
112[6], file an annotated copy of the claim indicating in bold face
between braces ({ }) the specific portions of the specification
that describe the structure, material, or acts corresponding to each
claimed function.
(c) Any motion to amend a claim or add a reissue claim must include
an addendum containing a clean set of the claims and, where applicable,
an addendum containing claims annotated according to paragraph (b) of
this section.
Sec. 41.120 Notice of basis for relief.
(a) The Board may require a party to provide a notice stating the
relief it requests and the basis for its entitlement to relief. The
Board may provide for the notice to be maintained in confidence for a
limited time.
(b) Effect. If a notice under paragraph (a) is required, a party
will be limited to filing substantive motions consistent with the
notice. Ambiguities in the notice will be construed against the party.
A notice is not evidence except as an admission by a party-opponent.
(c) Correction. A party may move to correct its notice. The motion
should be filed promptly after the party becomes aware of the basis for
the correction. A correction filed after the time set for filing
notices will only be entered if entry would serve the interests of
justice.
Sec. 41.121 Motions.
(a) Types of motions. - (1) Substantive motions. Consistent with the
notice of requested relief, if any, and to the extent the Board
authorizes, a party may file a motion:
(i) To redefine the scope of the contested case,
(ii) To change benefit accorded for the contested subject matter,
or
(iii) For judgment in the contested case.
(2) Responsive motions. The Board may authorize a party to file a
motion to amend, add, or cancel a claim, to change inventorship, or
otherwise to cure a defect raised in a notice of requested relief or in
a substantive motion.
(3) Miscellaneous motions. Any request for relief other than a
substantive or responsive motion must be filed as a miscellaneous
motion.
(b) Burden of proof. The party filing the motion has the burden of
proof to establish that it is entitled to the requested relief.
(c) Content of motions; oppositions and replies. (1) Each motion
must be filed as a separate paper and must include:
(i) A statement of the precise relief requested,
(ii) A statement of material facts in support of the motion in
short numbered paragraphs, with specific citations to the portions of
the record that support each fact, and
(iii) A full statement of the reasons for the relief requested,
including a detailed explanation of the significance of the evidence
and the governing law, rules, and precedent.
(2) Compliance with rules. Where a rule in part 1 of this title
ordinarily governs the relief sought, the motion must make any showings
required under that rule in addition to any showings required in this
part.
(3) The Board may order additional showings or explanations as a
condition for filing a motion.
(4) Oppositions and replies must comply with the content
requirements for motions and must include a statement identifying
material facts in dispute. Any material fact not specifically denied
will be considered admitted.
(d) Board-ordering briefings. The Board may order briefing on any
issue that could be raised by motion.
Sec. 41.122 New arguments in opposition or reply.
All arguments for the relief requested must be made in a motion. An
opposition may raise new arguments, but only in response to arguments
made in the corresponding motion. A reply may only respond to arguments
raised in the corresponding opposition.
Sec. 41.123 Time for acting on motions.
(a) A motion, other than a miscellaneous motion, may only be filed
according to a schedule the Board sets. The default times for acting
are:
(1) An opposition is due 30 days after service of the motion.
(2) A reply is due 30 days after service of the opposition.
(3) A responsive motion is due within 30 days of the service of the
motion.
(b) Miscellaneous motions. (1) If no time for filing a specific
miscellaneous motion is provided in this part or in a Board order:
(i) The opposing party must be consulted prior to filing the
miscellaneous motion, and
(ii) If an opposing party plans to oppose the miscellaneous motion,
the movant may not file the motion without Board authorization. Such
authorization should ordinarily be obtained through a telephone
conference including the Board and every other party to the proceeding.
Delay in seeking relief may justify a denial of the motion.
(2) An opposition may not be filed without authorization. The
default times for acting are:
(i) An opposition to a miscellaneous motion is due five business
days after service of the motion.
(ii) A reply to a miscellaneous motion opposition is due three
business days after service of the opposition.
Sec. 41.124 Oral argument.
(a) Request for oral argument. A party may request an oral argument
on an issue raised in a paper within five business days of the filing
of the paper. The request must be filed as a separate paper and must
specify the issues to be considered.
(b) Copies for panel. If a hearing is set for a panel, the movant
on any issue to be heard must provide three working copies of the
motion, the opposition, and the reply. Each party is responsible for
providing three working copies of its exhibits relating to the motion.
(c) Length of argument. If the request is granted, each party will
have 20 minutes to present its argument, including any time for
rebuttal.
(d) Demonstrative exhibits must be served at least five business
days before the oral argument and filed no later than the time of the
oral argument.
(e) Transcription. The Board encourages the use of a transcription
service at oral arguments but, if such a service is to be used, the
Board must be notified in advance to ensure adequate facilities are
available and a transcript must be filed with the Board promptly after
the oral argument.
Sec. 41.125 Decision on motions.
(a) Order of consideration. The Board may take up motions for
decisions in any order, may grant, deny, or dismiss any motion, and may
take such other action appropriate to secure the just, speedy, and
inexpensive determination of the proceeding. A decision on a motion may
include deferral of action on an issue until a later point in the
proceeding.
(b) Interlocutory decisions. A decision on motions without a
judgment terminating the proceeding is not final for the purposes of
judicial review. A panel decision on an issue will govern further
proceedings in the contested case.
(c) Rehearing. - (1) Time for request. A request for rehearing of a
decision must be filed within fourteen days of the decision.
(2) No tolling. The filing of a request for rehearing does not toll
times for taking action.
(3) Burden on rehearing. The burden of showing a decision should be
modified lies with the party attacking the decision. The request must
specifically identify:
(i) All matters the party believes to have been misapprehended or
overlooked, and
(ii) The place where the matter was previously addressed in a
motion, opposition, or reply.
(4) Opposition; reply. Neither an opposition nor a reply to a
request for rehearing may be filed without Board authorization.
(5) Panel rehearing. If a decision is not a panel decision, the
party requesting rehearing may request that a panel rehear the
decision. A panel rehearing a procedural decision will review the
decision for an abuse of discretion.
Sec. 41.126 Arbitration.
(a) Parties to a contested case may resort to binding arbitration
to determine any issue in a contested case. The Office is not a party
to the arbitration. The Board is not bound and may independently
determine questions of patentability, jurisdiction, and Office
practice.
(b) The Board will not authorize arbitration unless:
(1) It is to be conducted according to Title 9 of the United States
Code.
(2) The parties notify the Board in writing of their intention to
arbitrate.
(3) The agreement to arbitrate:
(i) Is in writing,
(ii) Specifies the issues to be arbitrated,
(iii) Names the arbitrator, or provides a date not more than 30
days after the execution of the agreement for the selection of the
arbitrator, and
(iv) Provides that the arbitrator's award shall be binding on the
parties and that judgment thereon can be entered by the Board.
(4) A copy of the agreement is filed within 20 days after its
execution.
(5) The arbitration is completed within the time the Board sets.
(c) The parties are solely responsible for the selection of the
arbitrator and the conduct of proceedings before the arbitrator.
(d) Issues not disposed of by the arbitration will be resolved in
accordance with the procedures established in this subpart.
(e) The Board will not consider the arbitration award unless it:
(1) Is binding on the parties,
(2) Is in writing,
(3) States in a clear and definite manner each issue arbitrated and
the disposition of each issue, and
(4) Is filed within 20 days of the date of the award.
(f) Once the award is filed, the parties to the award may not take
actions inconsistent with the award. If the award is dispositive of the
contested subject matter for a party, the Board may enter judgment as
to that party.
Sec. 41.127 Judgment.
(a) Effect within Office. - (1) Estoppel. A judgment disposes of all
issues that were, or by motion could have properly been, raised and
decided. A losing party who could have properly moved for relief on an
issue, but did not so move, may not take action in the Office after the
judgment that is inconsistent with that party's failure to move, except
that a losing party shall not be estopped with respect to any contested
subject matter for which that party was awarded a favorable judgment.
(2) Final disposal of claim. Adverse judgment against a claim is a
final action of the Office requiring no further action by the Office to
dispose of the claim permanently.
(b) Request for adverse judgment. A party may at any time in the
proceeding request judgment against itself. Actions construed to be a
request for adverse judgment include:
(1) Abandonment of an involved application such that the party no
longer has an application or patent involved in the proceeding,
(2) Cancellation or disclaiming of a claim such that the party no
longer has a claim involved in the proceeding,
(3) Concession of priority or unpatentability of the contested
subject matter, and
(4) Abandonment of the contest.
(c) Recommendation. The judgment may include a recommendation for
further action by the examiner or by the Director. If the Board
recommends rejection of a claim of an involved application, the
examiner must enter and maintain the recommended rejection unless an
amendment or showing of facts not previously of record is filed which,
in the opinion of the examiner, overcomes the recommended rejection.
(d) Rehearing. A party dissatisfied with the judgment may request
rehearing within 30 calendar days of the entry of the judgment. The
request must specifically identify all matters the party believes to
have been misapprehended or overlooked, and the place where the matter
was previously addressed in a motion, opposition, or reply. The Board
may toll the time for seeking judicial review (35 U.S.C. 142 and
146[1]) for the pendency of the rehearing.
Sec. 41.128 Termination.
A contested case is terminated after a final Board action, as soon
as any of the following occur:
(a) A notice of appeal under 35 U.S.C. 141 is filed,
(b) A civil action under 35 U.S.C. 146 is commenced, or
(c) The time for seeking judicial review has expired.
Sec. 41.128 Sanctions.
(a) The Board may impose a sanction against a party for misconduct,
including:
(1) Failure to comply with an applicable rule or order in the
proceeding;
(2) Advancing a misleading or frivolous request for relief or
argument; or
(3) Engaging in dilatory tactics.
(b) Sanctions include entry of:
(1) An order holding certain facts to have been established in the
proceeding;
(2) An order expunging, or precluding a party from filing, a paper;
(3) An order precluding a party from presenting or contesting a
particular issue;
(4) An order precluding a party from requesting, obtaining, or
opposing discovery;
(5) An order excluding evidence;
(6) An order awarding compensatory expenses, including attorney
fees;
(7) An order requiring terminal disclaimer of patent term; or
(8) Judgment in the contested case.
Sec. 41.150 Discovery.
(a) Limited discovery. A party is not entitled to discovery except
as authorized in this subpart. The parties may agree to discovery among
themselves at any time.
(b) Automatic discovery.
(1) Within 21 days of a request by an opposing party, a party must:
(i) Serve a legible copy of every requested patent, literature
reference, and test standard mentioned in the specification of the
party's involved patent or application, or application upon which the
party will rely for benefit, and, if the requested material is in a
language other than English, a translation, if available, and
(ii) File with the Board a notice (without copies of the requested
materials) of service of the requested materials.
(2) Unless previously served, or the Board orders otherwise, any
exhibit cited in a motion or in testimony must be served with the
citing motion or testimony.
(c) Additional discovery. A party may request additional discovery.
The requesting party must show that such additional discovery is in the
interests of justice. The Board may specify conditions for such
additional discovery.
Sec. 41.151 Admissibility.
Evidence that is not taken, sought, or filed in accordance with
this subpart shall not be admissible.
Sec. 41.152 Applicability of the Federal Rules of Evidence.
(a) Generally. Except as otherwise provided in this subpart, the
Federal Rules of Evidence shall apply to contested cases.
(b) Exclusions. Those portions of the Federal Rules of Evidence
relating to criminal proceedings, juries, and other matters not
relevant to proceedings under this subpart shall not apply.
(c) Modifications in terminology. Unless otherwise clear from
context, the following terms of the Federal Rules of Evidence shall be
construed as indicated:
Appellate court means United States Court of Appeals for the
Federal Circuit or a United States district court when judicial review
is under 35 U.S.C. 146.
Civil action, civil proceeding, action, and trial mean contested
case.
Courts of the United States, U.S. Magistrate, court, trial court,
and trier of fact mean Board.
Hearing means:
(i) In Federal Rule of Evidence 703, the time when the expert
testifies.
(ii) In Federal Rule of Evidence 804(a)(5), the time for taking
testimony.
Judge means the Board.
Judicial notice means official notice.
Trial or hearing means, in Federal Rule of Evidence 807, the time
for taking testimony.
Sec. 41.153 Records of the United States Patent and Trademark Office.
Certification is not necessary as a condition to admissibility when
the evidence to be submitted is a record of the Office to which all
parties have access.
Sec. 41.154 Form of evidence.
(a) Evidence consists of affidavits, transcripts of depositions,
documents, and objects. All evidence must be submitted in the form of
an exhibit.
(b) Translation required. When a party relies on a document or is
required to produce a document in a language other than English, a
translation of the document into English and an affidavit attesting to
the accuracy of the translation must be filed with the document.
(c) An exhibit must conform with the requirements for papers in
Sec. 41.106 of this subpart and the requirements of this paragraph.
(1) Each exhibit must have an exhibit label with a unique number in
a range assigned by the Board, the names of the parties, and the
proceeding number in the following format: JONES EXHIBIT 2001, Jones v.
Smith, Interference 104,999
(2) When the exhibit is a paper:
(i) Each page must be uniquely numbered in sequence, and
(ii) The exhibit label must be affixed to the lower right corner of
the first page of the exhibit without obscuring information on the
first page or, if obscuring is unavoidable, affixed to a duplicate
first page.
(d) Exhibit list. Each party must maintain an exhibit list with the
exhibit number and a brief description of each exhibit. If the exhibit
is not filed, the exhibit list should note that fact. The Board may
require the filing of a current exhibit list prior to acting on a
motion.
Sec. 1.155 Objection; motion to exclude; motion in limine.
(a) Deposition. Objections to deposition evidence must be made
during the deposition. Evidence to cure the objection must be provided
during the deposition unless the parties to the deposition stipulate
otherwise on the deposition record.
(b) Other than deposition. For evidence other than deposition
evidence:
(1) Objection. Any objection must be filed within five business
days of service of evidence, other than deposition evidence, to which
the objection is directed. The objection must identify the grounds for
the objection with sufficient particularity to allow correction in the
form of supplemental evidence.
(2) Supplemental evidence. The party relying on evidence to which
an objection is timely filed may respond to the objection by filing
supplemental evidence within ten business days of service of the
objection.
(c) Motion to exclude. A miscellaneous motion to exclude evidence
must be filed to preserve any objection. The motion must identify the
objections in the record in order and must explain the objections.
(d) Motion in limine. A party may file a miscellaneous motion in
limine for a ruling on the admissibility of evidence.
Sec. 41.156 Compelling testimony and production.
(a) Authorization required. A party seeking to compel testimony or
production of documents or things must file a miscellaneous motion for
authorization. The miscellaneous motion must describe the general
relevance of the testimony, document, or thing and must:
(1) In the case of testimony, identify the witness by name or
title, and
(2) In the case of a document or thing, the general nature of the
document or thing.
(b) Outside the United States. For testimony or production sought
outside the United States, the motion must also:
(1) In the case of testimony.
(i) Identify the foreign country and explain why the party believes
the witness can be compelled to testify in the foreign country,
including a description of the procedures that will be used to compel
the testimony in the foreign country and an estimate of the time it is
expected to take to obtain the testimony; and
(ii) Demonstrate that the party has made reasonable efforts to
secure the agreement of the witness to testify in the United States but
has been unsuccessful in obtaining the agreement, even though the party
has offered to pay the expenses of the witness to travel to and testify
in the United States.
(2) In the case of production of a document or thing. (i) Identify
the foreign country and explain why the party believes production of
the document or thing can be compelled in the foreign country,
including a description of the procedures that will be used to compel
production of the document or thing in the foreign country and an
estimate of the time it is expected to take to obtain production of the
document or thing; and
(ii) Demonstrate that the party has made reasonable efforts to
obtain the agreement of the individual or entity having possession,
custody, or control of the document to produce the document or thing in
the United States but has been unsuccessful in obtaining that
agreement, even though the party has offered to pay the expenses of
producing the document or thing in the United States.
(c) The Board, in determining foreign law, may consider any
relevant material or source, including testimony, whether or not
submitted by a party or admissible under the Federal Rules of Evidence.
Sec. 41.157 Taking testimony.
(a) Form. Direct testimony must be submitted in the form of an
affidavit except when the testimony is compelled under 35 U.S.C. 24, in
which case it may be in the form of a deposition transcript.
(b) Time and location. - (1) Uncompelled direct testimony may be
taken at any time; otherwise, testimony may only be taken during such
time period as the Board may authorize.
(2) Other testimony. (i) Except as the Board otherwise orders,
authorized testimony may be taken at any reasonable time and location
within the United States before any disinterested official authorized
to administer oaths at that location.
(ii) Testimony outside the United States may only be taken as the
Board specifically directs.
(c) Notice of deposition. (1) Prior to the taking of testimony, all
parties to the proceeding must agree on the time and place for taking
testimony. If the parties cannot agree, the party seeking the testimony
must initiate a conference with the Board to set a time and place.
(2) Cross-examination should ordinarily take place after any
supplemental evidence relating to the direct testimony has been filed
and more than a week before the filing date for any paper in which the
cross-examination testimony is expected to be used. A party requesting
cross-examination testimony of more than one witness may choose the
order in which the witnesses are to be cross-examined.
(3) In the case of direct testimony, at least three business days
prior to the conference in paragraph (c)(1) of this section, the party
seeking the direct testimony must serve:
(i) A list and copy of each document under the party's control and
on which the party intends to rely, and
(ii) A list of, and proffer of reasonable access to, any thing
other than a document under the party's control and on which the party
intends to rely.
(4) Notice of the deposition must be filed at least two business
days before a deposition. The notice limits the scope of the testimony
and must list:
(i) The time and place of the deposition,
(ii) The name and address of the witness,
(iii) A list of the exhibits to be relied upon during the
deposition, and
(iv) A general description of the scope and nature of the testimony
to be elicited.
(5) Motion to quash. Objection to a defect in the notice is waived
unless a miscellaneous motion to quash is promptly filed.
(d) Deposition in a foreign language. If an interpreter will be
used during the deposition, the party calling the witness must initiate
a conference with the Board at least five business days before the
deposition.
(e) Manner of taking testimony. (1) Each witness before giving a
deposition shall be duly sworn according to law by the officer before
whom the deposition is to be taken. The officer must be authorized to
take testimony under 35 U.S.C. 23.
(2) The testimony shall be taken in answer to interrogatories with
any questions and answers recorded in their regular order by the
officer, or by some other disinterested person in the presence of the
officer, unless the presence of the officer is waived on the record by
agreement of all parties.
(3) Any exhibits relied upon must be numbered according to the
numbering scheme assigned for the contested case and must, if not
previously served, be served at the deposition.
(4) All objections made at the time of the deposition to the
qualifications of the officer taking the deposition, the manner of
taking it, the evidence presented, the conduct of any party, and any
other objection to the proceeding shall be noted on the record by the
officer. Evidence objected to shall be taken subject to a ruling on the
objection.
(5) When the testimony has been transcribed, the witness shall read
and sign (in the form of an affidavit) a transcript of the deposition
unless:
(i) The parties otherwise agree in writing,
(ii) The parties waive reading and signature by the witness on the
record at the deposition, or
(iii) The witness refuses to read or sign the transcript of the
deposition.
(6) The officer shall prepare a certified transcript by attaching
to the transcript of the deposition a certificate in the form of an
affidavit signed and sealed by the officer. Unless the parties waive
any of the following requirements, in which case the certificate shall
so state, the certificate must state:
(i) The witness was duly sworn by the officer before commencement
of testimony by the witness;
(ii) The transcript is a true record of the testimony given by the
witness;
(iii) The name of the person who recorded the testimony and, if the
officer did not record it, whether the testimony was recorded in the
presence of the officer;
(iv) The presence or absence of any opponent;
(v) The place where the deposition was taken and the day and hour
when the deposition began and ended;
(vi) The officer has no disqualifying interest, personal or
financial, in a party; and
(vii) If a witness refuses to read or sign the transcript, the
circumstances under which the witness refused.
(7) The officer must promptly provide a copy of the transcript to
all parties. The proponent of the testimony must file the original as
an exhibit.
(8) Any objection to the content, form, or manner of taking the
deposition, including the qualifications of the officer, is waived
unless made on the record during the deposition and preserved in a
timely filed miscellaneous motion to exclude.
(f) Costs. Except as the Board may order or the parties may agree
in writing, the proponent of the testimony shall bear all costs
associated with the testimony, including the reasonable costs
associated with making the witness available for the cross-examination.
Sec. 41.158 Expert testimony; tests and data.
(a) Expert testimony that does not disclose the underlying facts or
data on which the opinion is based is entitled to little or no weight.
Testimony on United States patent law will not be admitted.
(b) If a party relies on a technical test or data from such a test,
the party must provide an affidavit explaining:
(1) Why the test or data is being used,
(2) How the test was performed and the data was generated,
(3) How the data is used to determine a value,
(4) How the test is regarded in the relevant art, and
(5) Any other information necessary for the Board to evaluate the
test and data.
Subpart E - Patent Interferences
Sec. 41.200 Procedure; pendency.
(a) A patent interference is a contested case subject to the
procedures set forth in subpart C of this part.
(b) A claim shall be given its broadest reasonable construction in
light of the specification of the application or patent in which it
appears.
(c) Patent interferences shall be administered such that pendency
before the Board is normally no more than two years.
Sec. 41.201 Definitions.
In addition to the definitions in Secs. 41.2 and 41.100, the
following definitions apply to proceedings under this subpart:
Accord benefit means Board recognition that a patent application
provides a proper constructive reduction to practice under 35 U.S.C. 102(g).
Constructive reduction to practice means description and enablement
of an embodiment within the scope of the interfering subject matter in
a patent application.
Count means the Board's description of the interfering subject
matter that sets the scope of admissible proofs on priority. Where
there is more than one count, each count must describe a patentably
distinct invention.
Earliest constructive reduction to practice means the first
constructive reduction to practice that has been continuously disclosed
through a chain of patent applications culminating in the involved
application or patent. For the chain to be continuous, each subsequent
application must have been co-pending under 35 U.S.C. 120 or 121, or
timely filed under 35 U.S.C. 119 or 365(a).
Involved claim means, for the purposes of 35 U.S.C. 135(a), a claim
that has been designated as corresponding to the count.
Senior party means the party entitled to the presumption under
Sec. 41.207(a)(1) that it is the prior inventor. Any other party is a
junior party.
Threshold issue means an issue that, if resolved in favor of the
movant, would deprive the opponent of standing in the interference.
Threshold issues may include:
(1) No interference-in-fact, and
(2) In the case of an involved application claim first made after
the publication of the movant's application or issuance of the movant's
patent:
(i) Repose under 35 U.S.C. 135(b) in view of the movant's patent or
published application, or
(ii) Unpatentability for lack of written description under 35
U.S.C. 112[1] of an involved application claim.
Sec. 41.202 Suggesting an interference.
(a) Applicant. An applicant, including a reissue applicant, may
suggest an interference with another application or a patent. The
suggestion must:
(1) Provide sufficient information to identify the application or
patent with which the applicant seeks an interference,
(2) Identify all claims the applicant believes interfere and show
how they should correspond to one or more counts,
(3) For each count, provide a claim chart comparing at least one
claim of each party corresponding to the count and show why the claims
interfere within the meaning of Sec. 41.203(a),
(4) Explain in detail why the applicant will prevail on priority,
(5) If a claim has been added or amended to provoke an
interference, provide a claim chart showing the written description for
each claim in the applicant's specification, and
(6) For each constructive reduction to practice for which the
applicant wishes to be accorded benefit, provide a chart showing where
the disclosure provides enabling description of an embodiment within
the scope of the interfering subject matter.
(b) Patentee. A patentee cannot suggest an interference under this
section, but may file a protest to the extent permitted under Sec.
1.291 of this title to draw the examiner's attention to a potential
interference.
(c) Examiner. An examiner may require an applicant to add a claim
to provoke an interference. Failure to satisfy the requirement within a
period (not less than one month) the examiner sets will operate as a
concession of priority for the subject matter of the claim. The claim
the examiner proposes to have added must, apart from the question of
priority under 35 U.S.C. 102(g):
(1) Be patentable to the applicant and
(2) Be drawn to patentable subject matter claimed by another
applicant or patentee.
(d) Requirement to show priority under 35 U.S.C. 102(g). (1) When
an applicant has an earliest constructive reduction to practice that is
later than the apparent earliest constructive reduction to practice for
a patent or published application claiming interfering subject matter,
the applicant must show why it would prevail on priority.
(2) If an applicant fails to show priority under paragraph (d)(1)
of this section, an administrative patent judge may nevertheless
declare an interference to place the applicant under an order to show
cause why judgment should not be entered against the applicant on
priority. New evidence in support of priority will not be admitted
except on a showing of good cause. The Board may authorize the filing
of motions to redefine the interfering subject matter or to change the
benefit accorded to the parties.
(e) Sufficiency of showing. A showing of priority under this
section is not sufficient unless it would, if unrebutted, support with
adequate evidence a determination of priority in favor of the party
making the showing.
Sec. 41. 203 Declaration.
(a) Interfering subject matter. An interference exists if the
subject matter of a claim of one party would, if prior art, have
anticipated or rendered obvious the subject matter of a claim of the
opposing party and vice versa.
(b) Notice of declaration. An administrative patent judge declares
the patent interference on behalf of the Director. A notice declaring
an interference identifies:
(1) The interfering subject matter;
(2) The involved applications, patents, and claims;
(3) The accorded benefit for each count; and
(4) The claims corresponding to each count.
(c) Redeclaration. An administrative patent judge may redeclare a
patent interference on behalf of the Director to change the declaration
made under paragraph (b) of this section.
(d) Additional patent, application, or interference. A party may
suggest the addition of a patent or application to the interference or
the declaration of an additional interference. The suggestion should
make the showings required under Sec. 41.202(a).
Sec. 41.204 Notice of basis for relief.
(a) Priority statement. Each party that will submit evidence of its
priority apart from its accorded benefit must file a statement alleging
with particularity facts that, if proved, would be sufficient for it to
establish an earlier date of conception or an earlier actual reduction
to practice. The statement must include all bases on which the party
intends to establish its entitlement to a judgment on priority and must
include documentary support for each basis when the documentary support
is a unique record under the control of the party or its real party-in-
interest. Failure of a junior party to file a sufficient priority
statement will be treated as an abandonment of contest absent a showing
of good cause.
(b) Other substantive motions. For each substantive motion that a
party will file, the Board may require a statement of basis for the
relief the party seeks.
(c) Filing and service. The Board will set the times for filing and
serving statements required under this section.
Sec. 41.205 Settlement agreements.
(a) Constructive notice; time for filing. Pursuant to 35 U.S.C.
135(c), an agreement or understanding, including collateral agreements
referred to therein, made in connection with or in contemplation of the
termination of an interference must be filed prior to the termination
(Sec. 41.128) of the interference between the parties to the
agreement.
(b) Untimely filing. The Chief Administrative Patent Judge may
permit the filing of an agreement under paragraph (a) of this section up
to six months after termination upon petition and a showing of good cause
for the failure to file prior to termination.
(c) Request to keep separate. Any party to an agreement under
paragraph (a) of this section may request that the agreement be kept
separate from the interference file. The request must be filed with or
promptly after the agreement is filed.
(d) Access to agreement. Any person, other than a representative of
a Government agency, may have access to an agreement kept separate
under paragraph (c) of this section only upon petition and on a showing
of good cause. The agreement will be available to Government agencies
on written request.
Sec. 41.206 Common interests in the invention.
An administrative patent judge may decline to declare, or if
already declared the Board may terminate, an interference between an
application and another application or patent that are commonly owned.
Sec. 41.207 Presumptions.
(a) Priority. - (1) Order of invention. Parties are presumed to have
invented interfering subject matter in the order of the dates of their
accorded benefit for each count. If two parties are accorded the
benefit of the same earliest date of constructive reduction to
practice, then neither party is entitled to a presumption of priority
with respect to the other such party.
(2) Evidentiary standard. Priority may be proved by a preponderance
of the evidence except a party must prove priority by clear and
convincing evidence if the date of its earliest constructive reduction
to practice is after the issue date of an involved patent or the
publication date under 35 U.S.C. 122(b) of an involved application or
patent.
(b) Claim correspondence. (1) For the purposes of determining
priority and derivation, all claims of a party corresponding to the
count are presumed to stand or fall together. To challenge this
presumption, a party must file a timely substantive motion to have a
corresponding claim designated as not corresponding to the count. No
presumption based on claim correspondence regarding the grouping of
claims exists for other grounds of unpatentability.
(2) A claim corresponds to a count if the subject matter of the
count, treated as prior art to the claim, would have anticipated or
rendered obvious the subject matter of the claim.
(c) Cross-applicability of prior art. When a motion for judgment of
unpatentability against an opponent's claim on the basis of prior art
is granted, each of the movant's claims corresponding to the same count
as the opponent's claim will be presumed to be unpatentable in view of
the same prior art unless the movant in its motion rebuts this
presumption with supporting evidence.
(d) Abandonment, suppression, or concealment. A party is presumed
to have abandoned, suppressed, or concealed the interfering subject
matter if the accorded date of the party's earliest constructive
reduction to practice is more than one year after the party's actual
reduction to practice. A party subject to this presumption must show in
its motion for priority that it did not abandon, suppress, or conceal
its invention.
Sec. 41.208 Content of substantive and responsive motions.
The general requirements for motions in contested cases are stated
at Sec. 41.121(c).
(a) In an interference, substantive motions must:
(1) Raise a threshold issue,
(2) Seek to change the scope of the count or the correspondence of
claims to the count,
(3) Seek to change the benefit accorded for the count, or
(4) Seek judgment on derivation or on priority.
(b) To be sufficient, a motion must provide a showing, supported
with appropriate evidence, such that, if unrebutted, it would justify
the relief sought. The burden of proof is on the movant.
(c) Specific motions that may be authorized, along with necessary
content for each, include:
(1) No interference-in-fact. A party moving for judgment because
the involved claims do not, in fact, claim interfering subject matter
must, for each of its involved claims, show that the subject matter of
the claim does not interfere within the meaning of Sec. 41.203(a) with
the subject matter of any involved claim of an opponent.
(2) Repose under 35 U.S.C. 135(b). A party moving for repose under
35 U.S.C. 135(b) must:
(i) Identify the claims of the movant's United States patent or
published application claiming the same or substantially the same
invention as is claimed in an opponent's involved claim, and
(ii) Show the opponent did not make such a claim prior to one year
from the grant of the patent or the publication of the application.
(3) Unpatentability of a claim. A party moving for a decision that
an opponent's claim is not patentable to the opponent must:
(i) Identify the legal basis for unpatentability,
(ii) Show why each claim alleged to be unpatentable fails to
satisfy the substantive requirements of the legal basis identified, and
(iii) For arguments involving prior art, explain why the movant's
claims corresponding to the same count as the opponent's claim are not
unpatentable in view of the prior art.
(4) Adding or substituting a count. (i) The movant must show why
the proposed count does not define the same invention within the
meaning of Sec. 41.203(a) as any other count, including the count it
would replace.
(ii) To broaden a count to include subject matter not in the
current count, the movant must:
(A) Show that the proposed count does not include prior art subject
matter,
(B) Show that the additional subject matter interferes within the
meaning of Sec. 41.203(a) with subject matter in an opponent's
involved claim, and
(C) Show why the change is necessary to a priority determination.
If the change is necessary to include the movant's best proof of
priority, the movant must proffer that proof with an explanation of why
it does not fall within the scope of the current count.
(5) Changing claim correspondence. - (i) To add a claim. A party
moving to add a claim to an involved patent or application must show
that the subject matter of the count would have anticipated or rendered
obvious the subject matter of the added claim and that the added claim
would be patentable in the patent or application. The showing of
patentability must include a showing of where the disclosure of the
patent or application provides written description of the subject
matter of the claim.
(ii) To designate a claim as corresponding to a count. A party
moving to have a claim designated as corresponding to a count must show
that the subject matter of the count would have anticipated or rendered
obvious the subject matter of the claim.
(iii) To designate a claim as not corresponding to a count. A party
moving to have a claim designated as not corresponding to a count must
show that:
(A) The subject matter of the count would not have anticipated or
rendered obvious the subject matter of the claim, and
(B) The claim to be designated as not corresponding to the count
does not interfere within the meaning of Sec. 41.203(a) with any claim
of an opponent's involved patent or application.
(6) Changing the accorded benefit. A party moving:
(i) To be accorded the benefit of another constructive reduction to
practice date must show that the application for which benefit is
sought provided a constructive reduction to practice of an embodiment
within the scope of the count.
(ii) To attack the accorded benefit of a constructive reduction to
practice date accorded to an opponent must show that the application
for which benefit has been accorded does not provide a constructive
reduction to practice of an embodiment within the scope of the count or
that the disclosure of the embodiment has not been continuous.
(7) Other requirements. The Board may specify additional
requirements for a motion.
(d) Claim charts. Claim charts must be used in support of any paper
requiring the comparison of a claim to something else, such as another
claim, prior art, or a specification. Claim charts must accompany the
paper as an appendix. Claim charts are not a substitute for appropriate
argument and explanation in the paper.
November 12, 2003 JON W. DUDAS
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the
United States Patent and Trademark Office